Hardly a week goes by now without news of another company announcing it will dissociate from a long-held brand that depicts or references racial caricatures or stereotypes. Even sophomoric attempts at humor like TRADER GIOTTO have tumbled in the face of public scrutiny.  Arrivederci! It’s as if in board rooms across America, executives have raised their gaze from balance sheets to look closely at the names and images on their ads and  wares. They have finally noticed what the public had been seeing for years: historical vestiges of “folksiness”, or worse, much worse, that were no longer viable in a multiracial, multicultural America.

That Indian maiden floating in a pastel haze on the LAND O LAKES butter tub? She’s no longer needed as the picture of radiant sunshine: evocation of nature alone will suffice.  UNCLE BEN with his savvy for all things rice, a man who has been serving it up since the 1940’s? He’ll be retiring, after having his look promoted in 2007 from that of a waiter to a business man. The Mars company, owner of the UNCLE BEN’S brand, said this is “now the right time to evolve the brand.” Evolve?

The Quaker Oats Company, the venerable brand which owns the AUNT JEMIMA trademarks, announced that it will be retiring the tireless homemaker as the face of its syrups and pancake goods. Despite an upgrade of her image a few years ago to pearl earrings and the look of a home economist, the history is too palpable for today’s consumers (and companies.) AUNT JEMIMA’s 19th century roots couldn’t be disguised with a wardrobe make over. Her warm smile and prizewinning pancakes will be missed, to be sure. But Quaker Oats, itself a subsidiary of Pepsico, a company whose portfolio is among the giants of American branding has decided the time is now to close the kitchen and put an end to a patronizing image.

Take that, Chief Wahoo!

In the world of professional and amateur sports, the Native American brands are having an expensive identity crisis. The owners of the Cleveland Indians released a statement saying the organization “is committed to engaging with our community and appropriate stakeholders to determine the best path forward with regard to our name.” (quoted in “Atlanta Braves not changing name, looking at “chop” celebration,” ESPN.com, July 12, 2020). In 2018, the owners of the Indians had announced plans to remove the toothy image of Chief Wahoo from team uniforms beginning with the 2019 season. Complaints about the Chief dated back many years. An effigy of his cartoonish face had been burned in protest as early as 1998, as recounted in Bellecourt v. City of Cleveland (104 Ohio St. 3d 439) (2004). The Ohio Supreme Court was faced with the question of whether the rights of people protesting the team’s use of Chief Wahoo and burning his effigy had been violated when they were arrested by Cleveland police and charged with aggravated arson. (In a 4-3 decision the court decided that there was justification for arrests, given the possibility of wind carrying embers from the burning effigy.) One dissenting judge found that adequate safety measures had been in place, there was no need for arrest, and that the burning was constitutionally protected speech. Moreover, he added: “If we allow flag burning in this country, we should certainly allow Chief Wahoo effigy burning. Our flag stands for over 200 years of freedom and unity; Chief Wahoo stands for 56 years (and counting) of baseball futility.”  Id., note 27. Take that, Chief Wahoo!

In a nod to the times, the Atlanta Braves management recently announced that they would initiate “review” of the appropriateness of the “tomahawk chop,” the frenzied wave of foam tomahawks by fans. They intimated that this could be a weighty decision, given that the “chop” inspires players on the field to perform.  Sports Illustrated reported that the team has removed the “Chop On” sign that graced the entrance to their ballpark. For the 2020 season, the slogan will no longer be “Chop On,” but rather “For The A.”  Amen!

The Braves have taken another path with respect to their team name.  They explained in a July 10 letter to season ticket holders that they would be not be changing their name. “We will always be the Atlanta Braves,” they wrote. Rather, they plan to continue and step up the consultations they have done with the Eastern Band of the Cherokees in North Carolina and add a new Native American Working Group to collaborate on issues.

The Washington Redskins have done the largest about face of all. For years, owner Pro Football, Inc. litigated to defend from cancellation several federal trademark registrations for REDSKINS that Native American plaintiffs argued were disparaging and offensive to a sizeable number of their peers. In 2016, the Supreme Court decision Matal v. Tam removed the statutory bar in Section 2(a) of the Lanham Act to registering disparaging or offensive marks on the grounds that such bar was a constitutionally impermissible restriction on speech. Following Tam, the cancellation proceedings against REDSKINS (which had been earlier affirmed by the Fourth Circuit) were dismissed by USPTO.  The team had “won” and retained its registrations.

Registration of the Washington Redskins mark in 1974

That was then

Today, trademark owners are reckoning with the origins and meaning of their brands. In the wake of the death of George Floyd at the hands of Minneapolis police officers and the ensuing protests against racial injustice, the voices and actions of citizens, consumers and corporate sponsors have been game changing.  FedEx, which owns the naming rights to the Redskins stadium under a reported $205 million deal that runs until 2025, urged the team management to change the name.  While the management considers its options, major merchandisers have removed Redskins memorabilia and items from their online stores.

The force and power of market backlash against offensive marks was foreseen in 2016 by a particularly perspicacious federal judge. Judge Kimberly A. Moore of the Federal Circuit Court of Appeals wrote the appellate opinion in In re Tam before the first panel of three judges that affirmed cancellation of the Redskins marks. That decision was vacated sua sponte by the Federal Circuit a short time later and the full appellate panel reconsidered the issues in light of this new question: Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment ? In re Tam, 785 F.3d 567 (Fed. Cir. 2015), The full panel decision addressing the constitutional issue found that the existing bar on registering disparaging and offensive marks could not stand. In re Tam, 808 F.3d 1321, (Fed. Cir. 2015). The Supreme Court affirmed.  Matal v. Tam, 137 S. Ct. 1744.

As recounted by Bloomberg News, Judge Moore observed in a panel at the International Trademark Association’s annual meeting in May 2016 that brand owners need to reckon with changing public standards. The right to make use of an offensive or disparaging mark to indicate the source of a good or service may be protected by the First Amendment, but it is not necessarily the way to win or retain customers, her remarks suggested.

We’ve Been Here Before

The current announcements about changes to long held brands have given rise to speculation in the legal press about whether interlopers will attempt to pick up where the suddenly “woke” corporations are leaving off. (As Racists Brands Fall, Will Some Try to Revive Them? Law 360, July 14, 2020) As of this writing, three different applicants have applied to register AUNT JEMIMA for goods related to pancakes or syrup.  Other applicants have rushed in to fill what they erroneously think is a trademark vacuum. An individual applied to register WASHINGTON REDSKINS for apparel and other memorabilia. Another individual submitted applications to the USPTO for marks that he believed the Redskins management was considering as alternatives to the current mark, such as REDHAWKS. He has reportedly offered to “give” the marks to the owners if they make charitable contributions to his liking.

Are such interlopers likely to be able to acquire rights in marks that teams or other companies have announced are no longer suitable to their corporate images or relationships with consumers? Yes, and no. One answer comes from a 1989 Second Circuit case that not coincidentally dealt with the doctrine of abandonment in the context of a racially charged mark: the famous Amos n Andy characters. (Characters may be marks if they serve a source-identifying function.) Silverman v. CBS, Inc., 870 F. 2d. 40 (2d Cir. 1989).  As recounted in the case, the fictional Amos ‘n’ Andy characters first appeared in radio episodes in 1928.  Their creators were two white radio actors and producers, Freeman F. Gosden and Charles J. Correll.  Gosden and Correll voiced the characters themselves, in some episodes playing multiple characters.  When the series transferred to television in 1951 under the CBS banner, Black actors were hired to play the roles, but the scripts remained the work of Gosden and Correll.  Throughout the years, the radio and TV shows attracted major sponsors: Pepsodent, Campbell‘s Soup and Blatz Brewing Company at some point were all commercial sponsors. The show also attracted negative attention: in the early 1950’s, the NAACP protested the television series as grossly distorting and demeaning. Id. CBS’s decision to cease producing new episodes was likely a result of this protest and changing attitudes about racial stereotypes in the media. The television series was aired on CBS affiliate stations until 1953 and continued in reruns and non-network syndication until 1966 when CBS withdrew it definitively.

The legal case arose when Silverman wrote a script in 1981 for a proposed Broadway musical based on the Amos ‘n’ Andy characters to be entitled “Amos ‘n’ Andy in Hollywood” or “Amos ‘n’ Andy Go to the Movies.” Silverman sought a license from CBS to use the characters and title for his musical, but the studio refused.  Silverman filed suit seeking a declaration that the radio programs were in the public domain and the content, including the characters and their names, were freely available for his use.  CBS countersued on copyright and trademark grounds asserting ownership of the copyright in the scripts for post-1948 radio shows, and infringement of CBS’s trademarks.  CBS asserted rights in “Amos ‘n’ Andy” as a mark (title) as well as the names of several other characters, including Kingfish, Lightnin’ and selected phrases such as “Holy Mackerel!” The trial judge first ruled that the names of the characters were protectable marks and set for trial the issue of whether CBS’s nonuse of the marks since 1966 constituted abandonment.  After a bench trial, Judge Goettel of the US District Court concluded that CBS had not abandoned its marks. Silverman v. CBS, 632 F. Supp 1344 (S.D.N.Y. 1986).

Silverman challenged the district court finding on abandonment and the Second Circuit agreed with him. The Court cited 15 U.S.C .§1127 (the definitions section of the Lanham Act at Section 45). “A mark shall be deemed to be “abandoned” (a) when its use has been discontinued with intent not to resume use.  Intent not to resume use may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie abandonment.” (There was a second ground for abandonment that was not germane to the case.) The Circuit Court addressed CBS’s non-use of the marks and determined that CBS had not use the AMOS ‘N’ ANDY marks for 21 years prior to Silverman’s suit.

It then probed whether there was an intent on CBS’s part not to resume use. Under the law in effect at the time of the case, nonuse of a mark for two consecutive years was considered prima facie abandonment. (The current rule requires three years of nonuse.) It was undisputed that CBS had made a considered decision to take the television programs off the air in 1966. As noted above, this was in response to complaints by civil rights organizations like the NAACP that the programs were demeaning to Blacks.  CBS argued that, while it had no plans to use the marks in the foreseeable future, it intended to resume using them at some point in the future should the social climate become more hospitable.” (It strains the imagination to think that lawyers preparing these arguments in the late 1980s might think that the social climate would become more receptive to Amos ‘n’ Andy after the 1968 riots, the upheaval of the 1970s and the demographic shifts of the 1980s.) Silverman v. CBS, Inc., 870 F. 2d. 40 (2d Cir. 1989).

But the question before the court was not one of sociology, but of statutory interpretation. Does the phrase “intent not to resume use” mean never to resume use or does it merely mean intent not to resume use within the reasonably foreseeable future?

The Second Circuit concluded that the latter interpretation must be correct. Intent not to resume use may be inferred from circumstances, and two consecutive years of non-use constituted prima facie abandonment. A mark owner should not be able to assert that “at some point” it would resume use of its mark, should conditions change, after a verifiable period of non-use that satisfies the statutory definition.  (CBS’s nonuse  more than satisfied this test.) Id. This standard protects against the forfeiture of marks by owners who are temporarily unable to continue using them. Where blockades or boycotts have prevented use of valid marks, courts have seen fit to side with owners who justify more prolonged nonuse. (See, for example, the cases involving marks for rum and cigars used in Cuba before the revolution’s ouster of foreign companies.) But this lenient attitude does not justify mere warehousing of marks, which according to the court “impedes commerce and competition.”

Though CBS could not enforce its trademark rights to block Silverman’s intended musical, market forces carried the day. No such musical went forward.

Common Sense and Consumer Associations Rule in Trademark Law

Silverman holding should give pause to owners of the recently retracted marks who might like to save them for another time.  It is not a good strategy to try to “shelve” the marks and associated merchandise for a few years to see how the today’s social movements and issues settle out. If the marks are not used for the goods or services for which they are registered within the span of 3 years from the public announcements of changes (which indicate intent not to resume use in most cases discussed above), in all likelihood, the marks will be deemed abandoned by their owners and the registrations will be subject to cancellation. Nor will minor uses be enough to prolong trademark rights unless the uses are of a commercial nature.  Silverman teaches that attempts to maintain trademark rights by engaging in minor uses like educational programs or sporadic licensing for non-commercial (non-profit) uses, as CBS did over the years after the Amos ‘n’ Andy series was withdrawn from broadcast, will not be sufficient to forestall abandonment. Such minor uses do not sufficiently “rekindle the public’s identification of the marks with the proprietor, which is the essential condition for trademark protection, nor do they establish an intent to resume commercial use.”

This doesn’t necessarily mean that third parties will be able to establish rights in such marks either.  The current trademark registrations for sport team names or famous brands will not be cancelled until some action is taken after the period of abandonment has lapsed. Their presence on the trademark Register will impede current applications by opportunists. Doctrines of unfair competition will also work against using team names in association with team colors or other indicia of sponsorship. The public associations of the marks, colors and other indicia with the teams themselves (or with the producers of goods) will serve to keep them within the orbit of the original owners for some time to come.  Public memory (and associations) can be enduring.

Mark owners may derive some comfort from a case a case involving “zombie” marks, so called because they are presumed to have “died” but have been resurrected. by a third party. Macy’s Inc. and Macys.com Inc. were able to defeat attempts by Strategic Marks, LLC to register the names of defunct department stores that had been absorbed into the Macy’s corporate family and rebranded Macy’s.  Strategic Marks specialized in reviving “zombie” marks. With this strategy, it applied to register Filene’s, The Bon Marche, Bullocks, May Company, among many other former department store names later folded into the Macy’s corporate structure.  Macy’s Inc. v. Strategic Marks, LLC, 117 U.S.P.Q.2d 1743 (N.D. Cal. 2016).  Strategic Marks operated the Retro Department Stores online and sold T-shirts sporting these store names, presumably targeting  nostalgic shoppers who recalled bygone days of happy shopping.  Macy’s itself sold told shirts with names of what it called its “heritage marks” and had begun to register these same older store names as marks for apparel. Macy’s sued for trademark infringement. Strategic Marks defended on the grounds that the marks as used by Macy’s were merely ornamental, hence not acting to identify the source of the shirts, or that Macy’s use was not actually a use in commerce as required by the Lanham Act.

The opinion by Judge Chen is instructive.  Strategic Mark’s primary argument, he wrote, “is that because Macy’s no longer operates the regional brands, the marks have been abandoned and can now be used by any other individuals.” This is wrong, he admonished.  “Simply because a store has ceased operations does not mean that its proprietor or owner does not maintain a valid interest in the registered trademark of the business. A consumer may still be confused as to whether the owner of a mark authorized or licensed the use by a third party.” As to Strategic Marks’ argument about what constitutes adequate use in commerce, Judge Chen did not accept the test proposed by the defendant. Use in commerce is well understood in the law and Macy’s use of its heritage brands on t-shirts satisfied that requirement.

Caution

Brand owners who are in the process of “evolving” or changing marks now seen as offensive will have a bit of breathing room to make those changes before their federal rights lapse in the current versions. If there is any virtue in maintain these marks beyond the statutory period of abandonment, they will need to continue to make use in commerce of the marks in some form. Third parties who jump in to try to capitalize on the prior popularity of team names or other brands will likely find themselves unable to establish any viable use themselves, thereby dooming applications.  And they may also find themselves in litigation from trademark owners who view their actions as infringement or cybersquatting (if the registrations apply to domain names).  Perhaps most importantly, they will also find themselves in the unforgiving court of public opinion, where a penchant for offensive and disparaging marks for commercial advantage will be judged unfavorably by consumers. As it should be.

 

The Wall Street Journal heralded the Supreme Court’s decision in the Booking.com case with the headline “Supreme Court Eases Trademark Rules for Websites. (United States Patent and Trademark Office et. al. v. Booking.com B.V., decision by J. Ginsburg.) The Court “gave online companies broad latitude to trademark their website names,” it proclaimed as an opener  to its article on July 1, 2020.  Not so fast.

The decision only establishes that there is no per se rule against federal trademark registration of a domain name that consists of a generic term plus a top-level domain (TLD) like .com (or .org, .net, .biz, etc.) An applicant still needs to prove that the primary significance to the public of the mark taken as a whole is as a designator of the source of specific products or services. In this case, the Court held that the mark Booking.com is entitled to registration because the public perceives it as designating a particular source of online hotel reservation services, rather than referring to a class of online hotel reservation services for which there might be many different providers.

This is not necessarily a burden that every website company can sustain. Surveys about consumer perception of marks are tricky to design and expensive to boot. Justice Breyer observed in his dissent that consumer-survey evidence “may be an unreliable indicator of genericness.” As Justice Sotomayor wrote in her concurrence: “Flaws in a specific survey design, or weaknesses inherent in consumer surveys generally, may limit the probative values of surveys in determining whether a particular mark is descriptive or generic in this context.”

How Does an Online Provider Prove that Its Choice of a Generic type Name has Taken on Trademark Significance?

Online companies will have to tred carefully to successfully assert that their marks comprised of a generic.com domain name warrant trademark registration. How likely are they to succeed? That will depend on the evidence they can marshall.

The adequacy of the evidence submitted by Booking.com B.V., the Dutch company that operates the website www.booking.com, was not at issue before the Supreme Court. In a new trial at the Eastern District of Virginia after appealing a refusal to register by the Trademark Trial and Appeal Board (TTAB), the company submitted a consumer survey that showed that approximately 74% of 400 people who took part in a structured inquiry known as a Teflon survey thought that Booking.com was a brand, rather than a generic term for a class of services. The finding was accepted by the district court judge as evidence that the mark was more than merely descriptive and certainly not generic. The appellate court majority did not find any error by the lower court’s assessment of consumer perception of BOOKING.com. Only dissenting Judge Wynn of the Fourth Circuit found fault with the district court’s presumption that a mark comprised of a generic term and a TLD would usually be descriptive, rather than generic. At the Supreme Court, the majority endorsed the finding that consumers perceive BOOKING.com to be an identifier of a particular online hotel reservation service. But the majority also cautioned that neither is there an automatic rule classifying marks in the form of generic.com as registrable. “Whether any given ‘generic.com’ mark is generic,” wrote Justice Ginsburg, “depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”

An amicus brief submitted by a group of researchers and consultants who specialize in measuring consumer perceptions of trademarks argued the view espoused by the leading trademark treatise (McCarthy on Trademarks and Unfair Competition) that the primary significance of a mark can be established by the views of a majority of consumers participating in a survey. Only a simple majority is needed. This is different from requirements to meet a consumer test for likelihood of confusion, where even a low measure of confusion, like 25-30% of respondents, can be enough to find infringement.

But is the Teflon inquiry the appropriate test for this question?

The USPTO had argued at the Fourth Circuit that the Teflon test was designed to measure consumer understanding of when marks that start out as brands become so widely used to denominate products that they wind up as generic. These are the brands of yesterday that have entered the lexicon: ESCALATORS, THERMOS, and NYLON, to name a few. They lost their ability to designate the source of a product because they became the name of the thing itself. The public stopped thinking of them as brands. Law students learn that they suffered “genericide.” Marks for novel products run the risk of just this sort of death by too much public affection. If all moving staircases become known as ESCALATORS, then the term no longer can identify the producer/source of that innovation.

The USPTO had argued below that the Teflon test was not the appropriate analysis where a mark begins life as generic.com and takes on new meaning over the course of time as the source of services, thanks to assertive advertising. This attack was not supported by the Fourth Circuit and seems to have fallen by the wayside at the Supreme Court. Rather, the Court embraced the importance of the primary significance to consumers as the measure by which to assess whether a mark is generic or not. The Teflon test, it seemed to say, measured just what was needed, regardless of the lifecycle stage of a mark.

The USPTO also argued unsuccessfully that the primary significance test which is set out in the trademark law in the section dealing with cancellations should not apply when the issue is registrability of a mark. The Supreme Court dispensed with that distinction in its wide embrace of the importance of establishing the primary significance of marks to the public as a hallmark of the Lanham Act system.

What Does the Public Understand about Domain Name Addresses?

Another prickly point: domain name addresses by their nature are singular. Only one domain name registrant can be assigned a specific domain name by the international domain name registration system administered by ICANN.  After more than twenty-five years of experience with the Internet, the public is presumed to understand this. Does that taint consumer perception of the primary significance of a mark displayed in the form of generic.com? In other words, do most people “get” that there can be only one owner of a domain name like booking.com or cars.com or wines.com? An amicus brief by Trademark Scholars cited by the Court in a footnote worried that consumers may conflate the fact that domain names are exclusive in the sense of having a unique address with a conclusion that a given generic.com term has achieved secondary meaning and has risen above its generic origins. Regrettably, that question did not form part of the consumer survey submitted in evidence and was not before the Court; the USPTO had not contested the district court’s finding of consumer perception. But the question is a good one and should be further explored by research by competent and disinterested social scientists.

Are Merely Descriptive and Generic Marks Now the Same where a TLD is added?

Other unanswered questions: Does this case effectively collapse the distinction between merely descriptive and generic marks when marks are in a .TLD form? Merely descriptive marks are registrable if they have acquired distinctiveness, also known as “secondary meaning.” Previously, generic marks were never registrable, even in the form of a compound mark where the additional term like “Company” or “Inc.” was itself an empty signifier. If a mark in the form of “generic.com” can be registrable because it has come to be perceived as a designator of source (i.e., it has acquired distinctiveness), what becomes of these two distinct categories in the trademark hierarchy of distinctiveness? Is there any longer a different rule for descriptive vs. generic marks when a TLD is attached to the term?

Lost in the news coverage and analysis is that Booking.com B.V. already owned several other USPTO registrations for BOOKING.com in various fonts and colors. The familiar chubby blue mark as used on the company’s website was registered, as were other versions of the mark. (See my previous blog on the case.) The company was hardly deprived of its ability to enforce its marks as actually used against those who adopted a confusingly similar mark for the same or related hotel reservation services. What it lacked was the ability to enforce plain “booking.com” in the context of disputes about domain names, because BOOKING.com had been held unregistrable by the USPTO.  Counsel for Booking.com B.V. said as much in her oral argument before the Court.  A trademark registration for plain BOOKING.com provides very weak protection in the trademark system, given the extreme descriptiveness of the term “booking.” But a registration will enable her client to prevail in disputes brought under the Uniform Dispute Resolution Policy (UDRP) administered by WIPO’s Arbitration and Mediation Center and other designated alternative mediation centers.

Domain name disputes focus only on the words registered, and not on colors or other features that play a role in distinguishing trademarks. A trademark owner who complains under the UDPR that another entity is cybersquatting or engaging in fraudulent activity under a domain name must show proof of its rights in the mark as incorporated into the accused domain name. A trademark registration is just such proof. A lack of registration can doom a UDRP complaint. This point was made forcefully in the amicus brief filed by the self-styled Coalition of .com Brand Owners comprising the owners of websites like CARS.com, JERKY.com, BACKGROUNDCHECKS.com, FRANCHISE.com and WINE.com. Justice Breyer argued in his dissent that owners like these who choose to register obvious terms as domain names in the form of generic.com enjoy an unfair “first mover” advantage in appropriating “a particularly valuable piece of online real estate.” Granting them trademark protection later when they have most profited from this appropriation only enshrines their monopoly over a term that competitors should be able to use to describe their own goods or services, he argued.

  What Next for Generic.com Marks?

In an amicus brief, Cars.com complained about difficulty enforcing its mark against an unaffiliated entity using a red Cars.com sign.

Following the Supreme Court decision, USPTO will have no further grounds to refuse to register BOOKING.com. Once that registration is in hand, it remains to be seen whether Booking.com B.V. will institute a series of domain name challenges under the UDRP against .com domain registrations that include the term “booking” for related services. We will also be on the lookout to see whether Justice Breyer’s forecast of a proliferation of generic.com registrations at the USPTO will come to pass. One thing is for sure: the USPTO will be applying the consumer perception test from now on to applications to register generic.com marks. It will be up to applicants to supply the necessary evidence to meet this standard. That won’t necessarily be easy. Online companies expecting the “broad latitude” announced by the Wall Street Journal to achieve trademark protection for obvious website names will find they still have significant hurdles to surmount.

It’s that time of year again, when people are traveling hither and yon.  If you haven’t made your reservations by now, or the French strikes have you worried, it’s likely you will find yourself at midnight scrolling through online travel sites to snag a last-minute, 20% off deal. Booking.com may be just the ticket.

A Date in Washington, D.C. will soon be Booked

Even the Supreme Court has turned its attention in that direction.  In early November, the Court granted certiorari in United States Patent and Trademark Office et. al v. Booking.com BV (case number 19-46). The mark at issue is the straightforward name of the website – BOOKING.COM owned by a Netherlands company Booking.com BV. (Author’s disclosure: I’ve successfully used Booking.com several times; their coverage in Europe is particularly complete and the British turns of phrase rather endearing to an American ear.)  The case turns on the registrability — or not — as a U.S. trademark of BOOKING.COM, comprised of the word BOOKING plus the top-level domain suffix .COM. (Let’s refer to Top Level Domains as TLDs; the Booking part of the domain address is known as a Second Level Domain or SLD.)

The case is hardly new. The appeals process has wended its way slowly from an initial examiner’s refusal to the Trademark Trial and Appeal Board to the Eastern District of Virginia and then to the Fourth Circuit Court of Appeals. The case raises questions about the registrability of commonplace e-commerce site names that achieve some degree of consumer recognition.  It puts in jeopardy the territorial division staked out in the last twenty-five years between trademark rights and registration and domain name registration. Should ordinary website names like HOTELS.COM be eligible for trademark registration if the sites have endured and achieved a measure of commercial success? The TTAB and lower courts have earlier said “no” to registration of HOTELS.COM and its ilk. But other .com sites have been registered by the USPTO: Weather.com, Ancestry.com, and Answers.com, to name a few.

The Supreme Court will be taking a look at this patchwork of decisions and the split between the Fourth Circuit’s Booking.com decision (915 F. 3d 171 (4th Cir. 2019), on the one hand, and Federal Circuit and Ninth Circuit decisions rejecting registration of website names like Lawyers.com and Advertising.com.  Along the way, the Justices will need to examine the boundaries between generic marks and merely descriptive marks. And they will have to determine the import of creating a compound mark by adding a TLD (like .com or .net) to an otherwise generic term, where no pun or “wink” to the public is intended.

An Abbreviated History of the Case

Amsterdam Canals 2017

Booking.com BV sought to register BOOKING.COM in the U.S. as a “block letter” word mark and in several stylized versions, including color, for various services, including for online hotel reservations  based on the company’s use of the marks since 2006. (The USPTO website displays the stylized marks in their signature chunky font with light and dark blue highlights.) According to USPTO records, the initial applications were based on a prior international registration at World Intellectual Property Organization, an avenue to registration permitted by Section 66(a) of the Lanham Act. Upon initial examination, a USPTO examiner rejected the application for the block letter form, finding that the mark BOOKING.COM was generic as applied to relevant services, the hotel reservation services recited in the application. [The services initially included some in Class 39, but the lower court only found that the Class 43 services would be protectible, so the current case deals only with Booking.com for hotel reservation services.] In the alternative, the USPTO initially concluded that the marks were merely descriptive but that the applicant had failed to establish that the marks had acquired secondary meaning by the time of the filing of the application. (Later in the process before the Eastern District, the applicant did mount persuasive evidence of secondary meaning, were the mark to be viewed as merely descriptive in the first instance.)

Generic vs. Descriptive

Until rather recently, and certainly before the .com era, a bright line divided generic marks and descriptive marks. With language borrowed from the 19th century, the traditional trademark opinions  explained that generic terms indicate the genus of a good, the very name by which it is commonly known, that cannot indicate the source of such good. By comparison, a descriptive mark, and certainly suggestive marks, indicate the species to which a certain good belongs, and can serve to indicate the source of the goods. These Linnean explanations have never much impressed my law school students. Rather, they appreciate that a generic name is one that is the ordinary name for an item in commerce. A descriptive term is one that limns out a quality or characteristic of a good, even if a rather prosaic attribute. If a descriptive term is no more than that, it is viewed as merely descriptive. As such, it may also fail the test for registration if no evidence is marshaled that the mark has become associated with the source of the goods.

Do you know a Generic mark when you see it?

In Booking.com, the Fourth Circuit laid out its three-step test to determine if a mark is generic: 1) first identify the class of products or services to which use of the mark is relevant; 2) identify the relevant consuming public; 3) determine whether the primary significance of the mark to the relevant public is as an indication of the nature of the class of the product or services to which the mark relates (in which case the mark would be generic) or as an indication of source or brand (which suggests that the mark is not generic.) Due to the stringent consequence of a finding of genericness, the USPTO has the burden to establish that an applied for mark is generic.

The appellate court cited to Abercrombie & Fitch Co. v. Hunting World, Inc. (537 F. 2d 4, 2d Cir. 1976) involving the apparel maker’s attempt to secure SAFARI for its exclusive use on multi-pocketed hunting-style jackets based on extensive advertising and promotion. Remember the look?  However, “no matter how much money and effort the user of a generic terms has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification,” that user cannot claim the exclusive right to obtain a registration for the common name used for the product or service. Nor could others be excluded from using the same term. When it comes to hunting jackets and gear, it’s SAFARI for all to use.

Measuring What the Public Understands

In the case before the Supreme Court, if the Fourth Circuit’s test is correct, the key question is: does the consuming public understand BOOKING.COM to refer primarily to the actual service (of booking hotel and other reservations online) or to the source of that service (a particular site owned by a company that commands certain hotel listings)? In assessing the primary significance to the public, the Fourth District found that the lower court did not err in ruling that the USPTO had not satisfied its burden. The USPTO failed to prove that the relevant public understands BOOKING.COM, taken as a whole, to refer to general online reservation services rather than to the services of a particular Dutch concern. Because the district court considers evidence de novo and was not bound by the findings of the TTAB, the lower court was entitled to make its own determination of the weight of consumer evidence over other evidence like dictionary definitions or trade journal mentions.

But how does a court determine what the public understands by a term like BOOKING.COM? Usage can be probative of public understanding, said the Fourth Circuit. (The dissent complained that legal error should have been found. In its view, the lower court overemphasized evidence of how the public used marks rather than how the public understands marks. But the majority gave the district court a pass in this regard.) Consumer survey evidence is the other way to get at understanding.  In the district court appeal from the TTAB decision denying registration, Booking.com BV submitted the results of a Teflon survey which demonstrated that almost 75% of respondents identified BOOKING.COM as a brand name rather than a general reference to hotel reservation sites. The survey respondents seem to understand that Booking.com was a website to reserve a hotel in Berlin for New Year’s Eve, for example, not just any reservation site in general.

Can a term that is “born generic” be recaptured as a Trademark?

Trademark doctrine has long recognized two types of generic marks: the mark that is “born” generic (a rose is a rose for the sale of roses) or a mark that was at one time invented or coined but becomes indistinguishable from the name of the thing itself and therefore generic. (Remember the awkward attempts to recapture THERMOS as a brand name for an” insulated heat-preserving beverage container”?). A mark that suffers this fate no longer points to a source of the product. It merely “is” the product in the eyes of consumers. In either case, a generic mark cannot escape its essence. It cannot be converted to a protectible trademark under the law.  Further, words like Company or Incorporated or Store, are likewise generic. Their addition to another term like Hotels or Mattresses cannot save a compound mark from classification as generic.

But in the internet era, does adding a TLD to a word that itself lacks distinctive qualities have the same result as affixing Company or Store, resulting in generic treatment? After all, under the schema created for TLDs by ICANN in the mid 1990s, a .com ending was to signify a commercial site, whereas a .org ending was reserved for not-for-profit organizations and .net for networking entities.  TLDs serve as directional signposts, telling the public (and computers) where to find certain sites on the Internet.  Each domain address comprised of an SLD name and a TLD is in fact a unique address in computer language.

The Fourth Circuit recognized that a TLD like .com by itself lacks source-identifying significance.  So merely adding .com does not wave a magic wand over a generic term to convert it into a source signifier.  But the Fourth Circuit also declined to adopt a per se rule against protecting as marks domain names that are formed by adding a TLD to a generic term. Rather, the court found comfort in a Fifth Circuit decision that held open the possibility that in “rare circumstances” a TLD may render a term sufficiently distinctive to be protectible as a mark.  Under this thinking, would tennis.net for a group of tennis training academies be registrable as a “witty double entendre”? Should the correct inquiry be: what does the public understand by a compound mark that includes a .com, .org or .net ending?

What’s really at stake?

The USPTO and the dissent in the Fourth Circuit have argued that granting registration will provide Booking.com BV with a “weapon to freeze out potential competitors” from using “booking” for similar or related services in their own marks. Having launched its site with a broad generic name to attract a wider user base, says the dissent, Booking.com should now have to live with the consequences of such choice, at least as far as US trademark registration goes.

Because the basis of trademark law is to protect competition and to prevent consumer confusion about the source of goods and services, this case raises the ante. Can companies gamble that the choice of a commonplace name for their website can later be converted to a registrable trademark if the sites prove successful?  Is such an outcome fair? I’m putting my chips with the dissent.

The case is attracting amici briefs. We will report again on the case in the spring term of the Court.

I’m from Billy Joel country, so you will forgive me if, despite living in Los Angeles, I am often in a “New York State of Mind.” But when I travel, I can’t help but notice that I get into an “IP State of Mind.” An example: I was in Buenos Aires a few years ago and in a small street wedged between rows of legal bookstores, I noticed the sign for a hardware store with a prominent blue and grey bull dog image and the word YALE in bold letters. Was the owner trying to imply an association between his stock, presumably from the famous Yale lock company (no relation to the University) and the bulldog mascot of the Yale University football team? It was a small potatoes trademark issue, but I couldn’t help but wonder what message the shop owner was after. A hint of status or prestige? Or do bulldogs spell security for the good inhabitants of Buenos Aires, where dogs seem as numerous as humans? Or was the owner simply confused about a possible link between the Ivy League university and the lock company (founded in the mid-19th century by Linus Yale, Jr. in Connecticut USA). I took a photo and filed it away for future use in a classroom.

More recently, I was in Prague and IP questions galore kept popping into mind.  I will explore some of them in coming posts.

The Kafka family lived next door to Old Town Hall

Brand KAFKA and Some Copyright Questions Too

For starters, this city has now branded itself the birthplace and creative haven of Franz Kafka. Billboards, posters, t-shirts and mugs all beckon with images of the writer from his young adulthood and with sketches of his imaginary demons. The Kafka Memorial statue is a must-see stop on any walking tour of Prague, a point of pilgrimage and selfies. The Franz Kafka museum is likewise a draw for visitors, attempting an explanation of Kafka’s world view and an introduction to his works, and displaying facsimiles of some of his writings. Printed maps of Kafka’s Prague are available in more than 10 languages.

Copyright Quandaries 

But amid the feverish tourism, I couldn’t help but wonder. What law originally protected Kafka’s copyrights in his writings? Some manuscripts (for what became The Trial, for example) were created during a period when Prague was an important but provincial city within the Austro-Hungarian empire. The work we know in English as The Metamorphosis was actually published with the author’s permission in Leipzig in 1916 in the original German. Other works by Kafka were created after a new Czechoslovakia was forged by the Treaty of Versailles following the end of WWI, such as the book we know in English as The Castle, written in 1922.

Kafka met an untimely death due to tuberculosis, just shy of his 41st birthday in 1924.  In a letter to his friend and fellow writer Max Brod found by Brod after Kafka’s death, the author gave clear instructions to destroy his letters, diaries and unpublished manuscripts. Instead, as the world came to learn, Brod “rescued” Kafka’s manuscripts, letters and diaries and set about editing them for publication and arranging for translations. But given the tumultuous historical period in which Kafka lived, which national law or international conventions should have applied to the protection of those unpublished works before Kafka’s death and those published after his death over a course of years? Were Kafka’s moral rights violated by Brod’s well-intentioned, but by some reckonings awkward, editions in German?

Terms of Protection and Validity of Copyright

These questions are not entirely idle when one is in an IP State of Mind. They are pertinent to establish the applicable term of protection of copyright in works that were subsequently published post mortem, as well as the duration of the copyright in The Trial published during Kafka’s lifetime. The question of applicable copyright also has bearing on the validity and duration of the 1934 publishing contract entered into by Kafka’s heir, his mother Julie (née Löwy) Kafka, upon the advice of Max Brod, some ten years after her son’s death. (Presumably, in Prague where she lived.)

According to Benjamin Balint, whose book Kafka’s Last Trial: The Case of a Literary Legacy (W.W. Norton & Company, 2018) is highly recommended for anyone interested in problems of authors’ estates, Kafka’s mother signed an agreement with Schocken Verlag publishers of Berlin, conveying worldwide publishing rights to her son’s works. By July 1935, Schocken Verlag had brought out the first four volumes of a planned multi-volume set of Kafka’s works in the original German. But scrutiny by the Nazis of the Jewish-owned Schocken company prompted the publisher to transfer its publishing rights temporarily (subject to a reversion upon request) for volumes 5 and 6 of Kafka’s collected works in German to Mercy Verlag, a Czech publisher, according to Balint. (German was the language of “high culture” in Prague in that period.)

This arrangement lasted until the German occupation of Prague in 1939 and the forced liquidation in Berlin of the Schocken publishing company. Balint recounts that the warehouse in Prague used by Mercy Verlag to store many editions of Kafka’s work on behalf of Schocken was itself destroyed with all its contents. Meanwhile, the principals of Schocken Verlag fled Berlin for New York. There, they reconstituted their company as Schocken Publishing. The new publisher remained the asserted rights holder for Kafka’s worldwide publishing rights, even as possession and ownership of the original Kafka manuscripts and diaries became the subject over the years of conflicting claims involving individuals and archives in Europe and Israel.

Kafka Comes to America

Schocken Publishing brought out the first English-language versions of Kafka’s novels beginning in 1946. By the early 1960’s, it was commonplace for American high school students to be assigned The Trial and The Metamorphosis in English versions translated from the German editions, perhaps even some prepared by Max Brod.

But how does an IP lawyer look at the changing legal regimes, forced dislocation, Nazi occupation, Soviet occupation, force majeure events, and shear difficulties in copyright registration formalities in trying to understand the IP aspects of the legacy of Kafka?

The Cambridge Handbook of Intellectual Property in Central and Eastern Europe

Fortunately for me, the recent publication of The Cambridge Handbook of Intellectual Property in Central and Eastern Europe, edited by scholar and professor Mira T. Sundara Rajan (© Cambridge University Press, 2019), has brought together the insights of fine legal minds from this region. Among the nuggets is “The Development of Hungarian Copyright Law until the Creation of the First Copyright Act (1793-1884) by Professor Peter Mezei of Szeged University, Hungary. He painstakingly explains the terms and reach of Austrian copyright law that applied to lands within the Austro-Hungarian empire, such as Bohemia (Prague) and Hungary. With the help of these scholars, including several contributors from today’s Czech Republic, an EU member, I hope to make some progress on the Kafka questions and share my thoughts in a future blog.

On the road

I had the pleasure of attending the California Lawyers Association-International Law Section joint meeting in Prague with the Czech Bar Association from October 17-18, 2019. The concept of the Rule of Law takes on a new and visceral meaning when you are seated in the courtroom of the High Court in Prague, one of two such courts in today’s Czech Republic. The chamber has been in use since 1918 and has witnessed major trials (and tribulations) in the history of that country.  Our guide, a former President of the Court, spoke to us in Czech language through an English-speaking lawyer.  You didn’t have to be a linguist to understand his commitment to justice and the wrenching twists and turns seen over more than a century in this courtroom.

A Courtroom, A History of Justice

Built after the end of WWI during the early years of independence of the newly created Czechoslovakia, the Hall of Justice in the High Court is a sober and modest wood-paneled room. (Adjacent to the Court building stood the national jail, a convenient location in a then thinly populated area outside the central of Prague.)  We learned that the High Court functioned as the second highest court in the country for matters in the capital district from 1918 onward; the Supreme Court and Constitutional Courts were located in the city of Brno, southeast of Prague.

But within 20 years of its construction, the integrity of Czechoslovakia was sacrificed to the expansionist vision of Hitler’s Germany, parcel by parcel, culminating in the March 1939 Nazi takeover of Prague and other cities and towns. The High Court chamber became the venue where Nazi judges oversaw trials of Czech republicans, Communists and other dissenters; executions took place at the nearby jail.

The end of WWII in Europe failed to restore Czech independence. Rather, liberating Soviet troops who established their control over Prague as of May 9, 1945, simply stayed on.  The Soviet presence was intended to last for a few months to allow for a return to civilian control as had been negotiated in 1944 with the Czech government in exile.   After the Communist party won the first post-war parliamentary election in 1946 in the Czech lands, the way was paved for a tighter link to the Soviet Union.  In February 1948 the Communists seized power in the Czech and Slovak lands.   From 1948 onward, the courtroom of the High Court was controlled by the Communist judges with allegiances to the Soviet Union.

Our lecturer unspooled a condensed history of trials and show trials over the course of 20 years, until the outbreak of the Prague Spring in 1968 under Czech leader Alexander Dubček.  Sadly, Warsaw Pact troops invaded in August 1968 to snuff out the fresh air of reform in Prague. And then once more, in a a cruel turn of fate, the courtroom again became the domain of hardliners.  Another 20 years of repression ensued, with trials of dissidents taking place in this room whose mute walls nonetheless stored so many memories. Vaclav Havel, the playwright and activist, and later President of a newly independent Czech Republic, stood trial more than once in this very courtroom, we were told.  He was sentenced to prison several times; his longest period of incarceration was from 1979-1983.

Memory and the Court House

The Soviet Bears

Sometimes, words alone do not suffice.  Our lecturer concluded by pointing out the sculptures in the lobby of the High Court. We recoiled in horror, so vivid was the portrayal of violence and suffering in this memorial to the tyranny of Soviet control.  A nearby plaque listed the names of Czech leaders and lawyers executed by the Nazis; another detailed the names of those executed by the Soviets. Several historical panels told the story of the establishment and perversion of justice, and Czech hopes for democracy since 1991. Our group was practically gasping for air by the time we stumbled out into bright October sunshine.

The Brunetti Case

The United States Supreme Court decision in Iancu v. Brunetti issued June 24, 2019 held that the Lanham Act provision barring federal registration of immoral and scandalous marks violated the First Amendment. The majority opinion, by an odd fellows grouping of justices (Kagan, Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh) explained that this part of Section 2(a) of the Lanham Act was as repugnant to First Amendment values as was the disparagement clause of the same provision, found unconstitutional in Matal v. Tam just two terms ago. (J. Gorsuch had been seated on the High Court a few months earlier but took no part in the Tam decision, while J. Kavanaugh had not yet been appointed when Tam was considered.)  The central tenet of the majority opinion in Brunetti is that a bar on registering marks that a substantial composite of the general public would find offensive or shocking is a form of viewpoint-based discrimination against content. (“Immoral and scandalous” had been treated by the USPTO as a “unitary term” with no separate meaning for each part of the statutory language.) Because trademarks can be words, names, symbols and images that express ideas, they are treated as expressive forms of speech subject to First Amendment protections. The Justices turned to leading dictionaries to see what “immoral” and “scandalous” mean and concluded that the Lanham Act language at issue bars registration of marks whose messages “defy society’s sense of decency or propriety,” but allows registration of marks that align with “conventional moral standards.” Such uneven treatment of ideas expressed by means of trademarks amounted to viewpoint-based content discrimination.

Obvious inconsistent application by the USPTO of Section 2(a) over the years contributed to the Justices’ discomfort with the language of Section 2(a).  According to the record below, the USPTO had refused registration for marks that conveyed approval of drug use [e.g., KO KANE and MARIJUANA COLA] and those that denigrated religious symbols [BONG HITS 4 JESUS] or seemed to praise terrorists [BABY AL QAEDA], but allowed registration of some marks that praised religious practice [PRAISE THE LORD] or fighting terrorism [WAR ON TERROR MEMORIAL]. That the marks refused registration were deemed offensive to many Americans was not a permissible ground to bar their registration when viewed through the prism of the First Amendment and prior jurisprudence on viewpoint-based content discrimination, according to the majority opinion.

The mark at issue in the recent case was F.U.C.T. as used for clothing, belonging to Erik Brunetti of California. The majority accepted that the mark was a proxy for a common vulgar term, but they also seemed convinced that use of the term conveyed a viewpoint. However, it was unclear in all the briefs and writings exactly what viewpoint was understood to be expressed by this mark, other than perhaps an attitude of vulgarity or general rebelliousness. The Court dismissed the Government’s rather awkwardly articulated argument that what was offensive about the mark was its mode of expression, rather than the content of the mark. The Government had argued that the Court could salvage the “scandalous” prohibition of Section 2(a) by construing it to refer only to “lewd, sexually explicit or profane marks,” an approach that might have rendered the language of Section 2(a) viewpoint-neutral.  But the majority declined to “rewrite” the statute, despite ample prior Supreme Court guidance about how to avoid findings of unconstitutionality by limiting the construction of a statute.

Opening the Floodgates?

It’s clear that the prospect of permitting federal registration of vulgar and obscene marks troubled several of the Justices. The Brunetti oral hearing in the spring at the Supreme Court had been telling. No lawyer or Justice dared speak aloud the mark at issue. Their reluctance and circumlocutions alone might have indicated to observers that the mark was not fit for the courtroom, let alone for tender ears, the airwaves, or the national marketplace with the imprimatur of a ®. And hovering in the background, without express mention, was the prospect that if this portion of Section 2(a) were struck down, the “N Word” might be registrable for any number of products. Under the majority opinion, that is now a possible and disquieting scenario.

Justice Alito suggested in his brief concurrence that Congress might easily fix our discomfort by adopting a “more carefully focused statute that precludes the registration of marks containing vulgar terms that play no real part in the expression of ideas.”  A seven dirty words approach to the Lanham Act? (He declined to sketch out how such a list of marks might be generated.)  In a lengthier dissent, J. Breyer chastised the majority for relying on hard and fast categorizations like “viewpoint-based content discrimination” and urged that the question be re-framed to ask whether a regulation like the ban on registering immoral and scandalous marks works “speech-related harm” that is “out of proportion to its justification.” In other words, does refusing to register F.U.C.T. limit speech in such a way that is not proportionate with the justification to avoid conferring registration (something akin to a government benefit) on a term that the public finds truly vulgar? Rather brilliantly, J. Breyer brought to bear current research about the effect of profanity on the brain and admonished that sexually explicit language, race-based epithets, and vulgarities originate in a different part of the brain than do words. Perhaps, he seemed to suggest, they are not communication or speech at all, at least not the same kind of speech that is worthy of Constitutional protection.

Is there a Way Out?

Drawing on Supreme Court precedent in the field of obscenity and harmful and threatening speech, J. Sotomayor provided an analytic framework in her dissent for an approach that would prohibit registration of obscene, profane or vulgar marks as reasonable, viewpoint-neutral, content-based regulations while striking down the ban in Section 2(a) on registering immoral marks. J. Breyer supported this approach but the majority was having none of it. They objected that this kind of dicing of statutes has never been applied in cases dealing with viewpoint discrimination. Moreover, it ruled that the entire provision at issue was substantially overbroad, thereby violating the First Amendment.

Despite laying out a possible roadmap for Congress, J. Sotomayor (as well as J. Breyer and J. Alito) dodged the process question of how to define the obscene, profane and vulgar marks that would be barred if Congress were to take up their approach. Obscenity has traditionally been judged against prevailing community standards.  Assuming Congress followed J. Alito’s suggestion and enacted a narrow Section 2(a) barring registration of obscene, profane and vulgar marks, would such language withstand Constitutional muster under the present Court perhaps with a twist of Breyer-esque analysis of emotion vs. thought? Would the USPTO know obscenity when it sees it? Might we need a group of expert consultants to advise every 5 or 10 years on the most obscene, profane and vulgar words and images in our language, a kind of Academy of Unmentionables? Could representatives of a nation as diverse and fractured as the USA agree on a set of terms that repulse us all and thereby wind up uniting us? It could be a worthwhile and instructive exercise.

Coming up Next

In our next installment, we will look at how the European Union has dealt with registration of immoral marks and marks deemed contrary to public policy. We might learn something about how other societies deal with a vexing issue in free speech and commerce.

 

 

The registered collective association mark owned by Mongols Nation Motorcycle Club of West Covina, CA

A novel attempt to seize a registered mark is captivating headlines in Los Angeles. The U.S. Attorney’s Office has prosecuted a motorcycle club known as Mongols Nation on charges of racketeering and conspiracy to commit racketeering. The club is alleged to be operating as a gang and the Government has argued that the gang bears responsibility for several violent crimes and drug dealing committed by some of its members. The recent case is a culmination of a lengthy investigation begun in 2005 by the Bureau of Alcohol, Tobacco, Firearms and Explosives, known as Operation Black Rain.  In 2008, approximately 79 full-fledged members of Mongols Nation plus some associates of the group pleaded guilty to various crimes. Prosecutors also sought at that time to gain control of the motorcycle club’s distinctive mark (shown above), but the judge denied the forfeiture request on the grounds that none of the individuals who were prosecuted in the case actually owned the mark.  In the current case, the sole defendant is the Mongols Nation Motor Club (the formal name of the motorcycle club) and the only remedy sought by prosecutors is forfeiture of the mark.

A jury verdict of guilty on the racketeering and conspiracy charges was returned on Thursday, December 12, 2018 in the Santa Ana branch of the Central District of California. According to the Los Angeles Times, at the sentencing phase of the trial scheduled for January 8, 2019, prosecutors will seek to “strip the gang” of the mark registered in the name of Mongols Nation that provides a sense of identity for members. The mark shows a rather cheeky caricature of a figure resembling Genghis Khan, riding a motorcycle. (See image.) Accredited members of Mongols Nation display the image on their motorcycle jackets and as patches on other paraphernalia. According to reports, the Government is persuaded that if it can ban use and display of the image, the allure of the gang and its bonds of criminal brotherhood will fade and the Mongols Nation will atrophy.

Requiring forfeiture of a mark in a criminal proceeding is a novel gambit. In this case, the Government appears to have overlooked a few considerations flowing from trademark law that may pose some obstacles to its objective. First, the mark in question is what’s known as a collective membership mark indicating membership in an association. The registration at issue in this case was properly filed under 15 U.S.C. 1054 (Section 4 of the Lanham Act) that provides for registration of a collective mark “by persons, nations, States, municipalities, and the like, exercising legitimate control over the use of the marks sought to be registered, even though not possessing an industrial or commercial establishment, and when registered, shall be entitled to the protection provided in this chapter in the case of trademarks.”) The mark MONGOLS M.C. mark was registered at the USPTO on May 15, 2015 to indicate membership in an association dedicated to motorcycle riding appreciation. The owner of the registration is Mongols Nation Motorcycle Club of West Covina, CA.  It’s interesting to note that the application to register this mark was filed only in 2014, several years after the prosecution of the gang members stemming from the Operation Black Rain investigation. Perhaps the club believed that registration would thwart the Government’s avowed interest in seizure, dating back to the 2008 case.

The registration alleges a date of first use of MONGOLS M.C. of December 1, 1969. This comports perfectly with the history of the motorcycle club as recounted in the filings and by the press. The Mongols trace their formation to a group of Latino Viet Nam veterans and other southern California men who sought membership in the Hells Angels motorcycle gang but were rejected. The solution was to establish their own rival organization. The Los Angeles Times reported that Mongols Nation today has several hundred members spread across various chapters in Southern California and beyond. The club has association bylaws, a constitution and officers, and designates a “mother chapter” in West Covina, CA.

Cancellation

A registered collective association mark may be cancelled at the USPTO on several grounds. If the owner association no longer exercises legitimate control over the mark — such as by failing to act in accordance with its bylaws or to control the membership or members’ uses of the mark — it would likely not meet the statutory requirements for a collective association mark. This might occur, for example, if the association itself is banned or dissolved or the bylaws are nullified. Legitimate control in such circumstances would obviously be compromised. Another ground for cancellation, available to all types of marks within the first 5 years of registration at the USPTO, may apply.  Any person who believes he would be damaged by the registration can file a petition to cancel a registration.  Typically, the type of damage considered relevant by the Trademark Trial and Appeals Board which conducts the cancellation proceedings is commercial harm of unfair competition, for example, that the mark in question is deceptive or likely to create confusion in the public mind about the source of a product or service, or that it falls into a category of marks that never should have been registered in the first instance, such as generic or functional marks. A novel approach to a damage claim might be argued by victims of a gang if they could make out a case that the continued registration of the mark harms their safety or well-being. However, since the Federal Circuit opinion in In re Brunetti (and Supreme Court denial of certiorari), a mark may no longer be denied registration or cancelled because it is offensive or scandalous, a claim that might have held water vis-a-vis the MONGOLS M.C. mark just a few years ago. Rather, since the Supreme Court’s decision in Tam (concerning the registrability of the allegedly disparaging mark THE SLANTS for a band), the expressive and viewpoint aspects of trademarks have been found to be protected speech.

Forfeiture

Seeking forfeiture of the registration MONGOL M.C. treats the mark as an asset of the association-owner, akin to a property interest. Forfeiture has been used in the last decade as a remedy in several high-profile in rem proceedings brought by the Department of Justice against websites offering pirated movies and counterfeit goods. In several such cases, the domain name registrars for the pirate sites were operating in the United States or in countries with IP enforcement treaties with the U.S.  After seizure, the domain names became the custody of the federal government and were shut down, effectively blocking the use of the sites to advertise and distribute pirated content and counterfeit goods.

But unlike domain names, trademarks are a hybrid form of intellectual property. They are not purely an ownership interest like patents or copyrights. Marks obtain value through the goodwill developed over time that connects the mark in the public mind to the source of a good or service (or in this case, associates the mark with a particular membership organization.) And unlike copyrights or patents whose protections flow from Section 1, Article 8 of the U.S. Constitution, which provides authors and inventors with exclusive rights in their writings and inventions in order to “promote the Progress of Science and useful Arts,” the source of authority for trademarks is the Commerce Clause of the Constitution. Rights in trademarks attach as the marks are used in commerce; their purpose is not only to protect the investments of those who identify their businesses or endeavors by marks, but also to protect the consuming public against deception and confusion in the marketplace.

Moreover, registration of marks is not required to obtain enforceable rights. Rather, use of marks is critical to establish and sustain trademark rights. Although registered marks are entitled to certain presumptions, the Lanham Act accords broad protections to unregistered marks.

Which brings us back to MONGOLS M.C.  Seizing the registration through the court case does not by itself prevent members (or associates or aspiring members) from using the mark and may not even prevent the association from continuing to exercise control over use of the mark on an unregistered basis. How then might the Government achieve its real aim which appears to be to ban use of the imagery altogether? Can the Government ask the court to enjoin the Motor Club from exercising its association rights, including by prohibiting use of the club patch by members, on the grounds that the association itself has been found to be a criminal enterprise and is no longer protected? Can the Government prevent individual members or even nonmembers from exercising their free speech rights by wearing their own clothing emblazoned with the Genghis Khan image? And if the higher courts have already indicated that as a society we must tolerate even disparaging and offensive marks as part of our defense of freedom of expression, on what basis can the Government ban the MONGOL M.C. mark altogether?

This situation presents a sticky wicket to be sure. The January 8th hearing is bound to be interesting!

 

 

A press release from the Office of the U.S. Trade Representative in early October heralded the key achievements of the recently concluded U.S.-Mexico-Canada trade agreement, intended to replace the vilified NAFTA agreement that dated from the early 1990s. Let’s take a look at what the release said about Geographical Indications:

“The Parties agreed to provide important procedural safeguards for recognition of new geographical indications (GIs), including strong standards for protection against issuances of GIs that would prevent United States producers from using common names, as well as establish a mechanism for consultation between the Parties on future GIs pursuant to international agreements.”

Readers of this blog will recall that U.S. dairy producers in particular were fired up after the European Union concluded a free trade agreement with Canada (CETA) and announced a trade agreement with Mexico, both of which gave protection within Canada and Mexico to a list of European sourced cheese names that included FETA, FONTINA and ASIAGO, among others. That indignity came after U.S. industry had watched as the EU earlier wrapped up trade agreements with China and Japan, each of which contained extensive lists of protected cheese names as GIs. (Certain meats, wines and other goods are also listed as protected GIs. GIs for wine implicate some complicate rules under the TRIPS agreement, so we’ll stick with cheese in this discussion.)

Faced with the difficulty of being an outsider to those EU bilateral trade agreement, U.S. industry, represented by the Consortium for Common Food Names (CCFN), the U.S. Dairy Export Council and others, mounted a full court press with the Trump administration to push for clawbacks through the trilateral USMCA negotiations. (Even more infelicitous in sound than its predecessor NAFTA, in some legal quarters, this new agreement is being called “USumCA”. A good name for a stinky cheese?)

What does USMCA achieve for US cheese producers?
In the area of procedural safeguards, Mexico and Canada agreed that where Parties (meaning the nations that are each a party to the new USMCA agreement) allow registration of GIs in their jurisdictions, there must be greater transparency in the examination process, including opposition and cancellation procedures akin to those in effect for trademarks, with published decisions that are available and searchable by electronic means. Two grounds for opposition or cancellation reflect trademark-like approaches, namely, that a GI that is likely to cause confusion with a mark that is the subject of a pre-existing trademark application or registration; or the proposed GI is likely to cause confusion with a trademark that has acquired rights (such as though use) under law. The third (and more interesting) ground for opposition/cancellation speaks to the concerns of the US cheese industry: that the GI is a term “customary in common language as the common name” for the relevant good in the territory of the Party.

Several footnotes accompany this notion. A refusal to register based on “common name” objections may be addressed by the applicant agreeing to disclaim any exclusive rights in the GI term that is considered a common name. A clarifying footnote explains: “a term customary in common language as the common name may refer to single component terms or individual components of multi-component terms.” Practical translation? “Asiago” standing alone as a GI may be challenged and be required to be disclaimed; or if used in combination with “Uncle Sam’s Wisconsin Asiago,” may also be challenged as a common name in a proceeding and then disclaimed.

How to Determine whether a term is “customary in the common language”?

CCFN had been advocating that common food names should not qualify for GI protection, but in its published materials, had rarely done more than assert that some cheese names had become “common names” for types of cheese that consumers outside the U.S. recognized, but did not associate with a particular place of origin. But CCFN rarely offered any evidentiary guidance for how to determine whether this was, in fact, the case with respect to any given cheese name. And certainly no mention was made of how to determine if a cheese name that is common in a producer country (like the USA) carries over that same status—or not– when newly introduced on products to first-time consumers in another country.

Article 20, E 4 of USMCA tackles this issue. The examining authority in the country where a GI seeks registration, say Mexico or Canada, “shall have the authority to take into account how consumers understand the term” inside their countries. How will they do so? Certain factors are set out as relevant to the inquiry:

• Whether the term is used to refer to the type of good in question, as indicated by “competent sources” like dictionaries, newspapers and relevant websites.
• How the term is marketed and used in trade in the territory of that Party;
• Whether the term is used, as appropriate, in relevant international standards recognized by the Parties to refer to a type or class of good in the territory of the Party, such as pursuant to a standard promulgated by the Codex Alimentarius; and
• Whether the product in question is imported into the Party’s territory, in significant quantities, from a place other than the territory of the GI identified in the petition, and whether those imported products are named by the term.

The last two factors are clearly derived from the CCFN playbook. It had argued that cheese names listed in the guidelines set out in the Codex Alimentarius, the food safety standard of the UN’s Food and Agriculture Organization (FAO), should automatically equate to “common names” and therefore be considered incapable of designating a particular place of origin or linking the quality or reputation of a product to a specific geographic place. In this view, a cheese name listed in the Codex would be ineligible as a GI in any jurisdiction covered by USMCA. For example, if the Codex has production and safety guidelines for CHEDDAR, then CHEDDAR could not act as a GI. This new USMCA “factor” does not address the fact that the Codex, by its own explanation, was developed for a different purpose altogether nor does it provide a means to evaluate the weight accorded one trade-incentivizing international guideline (food safety) over another one (protection of GIs).

The principal achievement of the U.S. dairy industry was to include the last factor for consideration by the relevant authorities. Since Canada has its own robust dairy industry and does not import a great deal of cheese from the U.S., the provision must have been squarely directed to the uncomfortable case of Mexico. Mexico imports a large amount of cheese from U.S. producers, but had agreed in principle in its FTA with the EU to protect a list of European GIs for cheese, some of which cheese names are used more “generically” by US cheese makers. Applying this factor, the volume of sales in Mexico of Wisconsin-made FONTINA cheese would be considered in deciding whether Mexico could agree to respect FONTINA as a GI under an EU FTA framework, which would otherwise give exclusive use and protection of that term to a cheese made only in a certain region of Italy.

But what does it mean to say that a product is imported in “significant quantities”? A footnote clarifies: a Party may consider the amount of importation of that product at the time of an application or petition is made for protection of a GI. But this explanation still begs the question of what is meant by significant quantity. For a premium artisanal cheese sold in upscale markets, a significant level of import may look quite different from a significant level of importation of an industrially produced cheese sold in discount or big box markets. And for large countries, such as Mexico or Canada, which markets are at issue? Urban niche markets? Home deliveries? Internet sales? Traditional grocery stores?

When is the Cheese Course?

The certification mark of Conzorzio Tutela Formaggio Asiago of Italy, filed with the USPTO


Time will tell how these factors play out in analysis by relevant authorities in Mexico and Canada. What is clear, however, is that Canada and Mexico also had highly motivated and excellent negotiators. For the immediate present, USMCA does not rectify the concerns of CCFN or other cheese producers regarding the list of GIs previously agreed between the EU and Canada (2016) or between the EU and Mexico (2018). That’s due to a timing issue. Article 20, E.7 (6) states that no Party is required to apply Article 20 to GIs that have been specified, identified in, and that are recognized and protected pursuant to, an international agreement involving a Party, or a non-Party, provided that the agreement was concluded, or even agreed in principle, prior to the date of conclusion or agreement in principle of USMCA; or was ratified by a Party prior to the date of ratification of UCMCA; or entered into force for a Party prior to the date of entry into force for UCMCA for that Party. Assuming USMCA was agreed in principle on September 30, 2018, that allows Canada and Mexico to continue to respect and protect the GIs that each respectively agreed with the EU. If new GIs are nominated under either bilateral trade agreement later in time, Canada or Mexico, as the case may be, will need to abide by the new requirements set out in USMCA.

Business Insider reported in early October that President Trump, Canadian Prime Minister Justin Trudeau, and Mexican President Enrique Peña Nieto are expected to sign the agreement shortly before Peña Nieto leaves office on November 30. Given the notification requirements under USTR’s trade promotion authority, the U.S. Congress would not vote on USMCA until 2019. Even if the U.S. Senate approves the deal, the new leadership in the U.S. House of Representatives is bound to ask questions. Notwithstanding that USMCA was negotiated by USTR on a “fast track” authority basis that does not allow for changes to negotiated language after the fact (remember the fast-tracked Uruguay Round Agreement Act and its unintended consequences for copyright?), newly installed members of Congress will likely want to know what they are being asked to sign off on. And because the agreement broadly addresses issues about labor, the environment, dairy production, wheat quotas and other areas of intellectual property, the questions are bound to be plentiful. GIs may turn out to be a cheese dessert, rather than a main course of discussion..

 

In December, in time for the holidays, we’ll take up the status after BREXIT of Scotch Whisky, Cognac and other premium drinkable GIs

It’s hot as the blazes in most of the U.S., Europe and Central America these days. Which makes a watermelon salad with mint and feta cheese sound very appealing, to say the least.  But the recipe calls for “real” feta cheese, the salty kind, to offset the sweetness of the melon. Is there more than one kind of feta cheese?

That question is at the heart of a simmering dispute between the U.S. dairy industry and EU trade negotiators.  While the US has been largely thumbing its nose at multilateral trade agreements since November 2016, the EU has been astutely promoting protections for a list of “geographical indications” (GIs) it holds dear.  The vehicle of choice to obtain protection and enforcement mechanisms for selected European GIs for foodstuffs, spirits and wines has been the negotiation of Free Trade Agreements. In a remarkably short time (especially in view of the anti-trade agreement climate in the U.S.), the EU has concluded FTAs with Canada (called CETA), Japan and China and is in the process of finalizing lists of protected GIs with Mexico and the Mercosur region (comprising Argentina, Brazil, Paraguay and Uruguay) after reaching agreements in principle on FTAs in each case. In the cheese department, and depending on which specific FTA is at issue, we’re talking about enhanced protection in those markets for PARMAGIANO ROMANO, PECORINO ROMANO, ASIAGO, FONTINA, GORGONZOLA, DANBO, ROQUEFORT and MUENSTER among others.  But the cheese that has gotten the most attention is known in the trade as the F-word: FETA.

A recent article by the US trade association Consortium for Common Food Names (June 4, 2018) screamed bloody murder: “Mexico is failing its trading partners by giving away Common Names in EU Deal.” Mexico’s potential sin? Agreeing to grant protection to “Feta” and “Munster” cheese.

Whats a GI anyway? A designator of place of origin

In our very first blog, we explained the nature of GIs and why this type of protection is emerging as a key trade policy issue for the EU.

A GI is commonly understood as a sign or designation used on products that have originated in a specific place and possess qualities or a reputation that are due to or depend on that place of production. In other words, there is a link between the product and its place of production. If the link is very strong, such that the quality or characteristic of the product is said to result exclusively or essentially from the geographic origin, then the GI is known in some systems as an Appellation of Origin (AO). Wine producers and wine aficionados will likely be familiar with AOs, but in fact, AOs can apply to a variety of other products including cheese, meat, rice, even handicrafts. The connection between a product and the geographic environment may be due to natural factors, like terroir, or human factors, like the traditional means of production. In either case, for AOs, the reputation of the product must rest essentially on the connection to a specific place.

The quintessential example of an AO applied to food is Roquefort cheese. It is produced in a very specific manner in the SW French town of Roquefort-sur-Soulzon, from the milk of indigenous sheep in a manner that involves traditional know how, including aging the cheese in local cliffs for two weeks. It’s hard to imagine a product more tied to a specific place with a sound rationale for preventing others from impersonating a true Roquefort.  For GIs, a somewhat looser association with a geographic place is required. It is sufficient for a GI that a given quality or characteristic of a product originate in a specific place; not all steps of production must be conducted in that place for the GI to be acceptable.

In effect, a GI acts as an indicator of quality, informing a consumer that the product has actually been produced in the place that has become famous for that item and according to the methods of production that account for the prized taste, color, texture, etc.  Achieving protection for a GI, especially when that is indicated by a snazzy new label, means that the quality of the product can be readily recognized by consumers. It’s easy to understand why GIs would hold such importance for agricultural economies like the EU member states seeking to compete in the world market based on high-quality products from smaller scale artisanal and traditional producers.  Their ostensible interest in promoting GI is to prevent fraud and counterfeits and foster rural development while educating new consumers to the authenticity and value of their place-related products.  Thanks to the new EU FTAs, consumers in Beijing or Tokyo can rely on the labels CAMEMBERT DE NORMANDIE, PARMA HAM or SCOTCH WHISKEY to signal the authenticity of products for which a premium will be charged at the checkout stand.

Legal Protections of GIs

GIs are recognized and can be protected through a variety of legal mechanisms. Individual countries, like Costa Rica and Colombia, may adopt a sui generis GI system within their own borders to draw attention to the special qualities of products that are linked to a specific place. Other countries protect certification marks under a trademark-like registration scheme to designate products that adhere to certain standards in quality or conditions overseen by a third party. Think IDAHO POTATOES or KONA COFFEE GROWERS, designators overseen by regional trade councils or growers’ associations. On the international level, several international treaties are relevant to the protection of GIs, including the 1958 Lisbon Agreement for the Protection of Appellations of Origin that deals expressly with AOs and its more recent Geneva Act addressing GIs, as well as Article 22 of the Trade-Related Aspects of Intellectual Property Rights Agreement (TRIPS) that was part of the WTO Agreement that came into effect on January 1, 1995.

Under TRIPS, signatory countries must have legal means to prevent use of GIs that mislead the public as to the geographical origin of the product as well as prevent other uses that constitute unfair competition within the meaning of Article 10bis of the Paris Convention. There are also interactions with trademark regimes as well. The registration of a trademark which uses a GI in a way that misleads the public as to the true place of origin must be refused or invalidated ex officio if the legislation so permits or at the request of an interested party.

Worldwide, the EU is probably the strongest proponent of protection for GIs. Why? For one, it represents the interests of its 28 member states, many of which have well-established specialty agricultural producers. Second, patience apparently has worn thin. The TRIPS Agreement was thought to lay the framework for protection of GIs, but work on the ancillary negotiations that would make that enforcement a reality for foodstuffs and handicrafts (and not just wine and spirits addressed in TRIPS as signed) has been dilatory at best.  EU has found other means to achieve its ambitions. A study commissioned and financed by the Commission of the European Communities (a precursor to the Commission of the European Union) sometime around 2003 was entitled “Geographical Indications and TRIPS 10 Years Later… a Roadmap for EU GI holders to get protection in other WTO Members[1]”.

Whatever its other failings, the EU is very good at following roadmaps. Fifteen years after the mentioned report, the place of GIs in the EU internal market as well as in EU bilateral and multilateral trade policy is firmly established. Within the EU system, a sui generis form of protection and registration is in place for GIs on three levels: Protected Designation of Origin (PDO); Protected Geographical Indication (PGI) and Traditional Specialty Guaranteed (TSG).  Each has a corresponding symbol (insert symbols) that may be applied to packaging for products that meet the conditions for protection. The highest level of protection is the PDO, reserved for agricultural products and foodstuffs, and more recently, handicrafts, that are produced processed and prepared in a given geographical area using recognized know-how. This represents the crème de crème of the EU system. And more often than not, the PDOs form the basis of the negotiation lists that the EU seeks to enforce through the FTAs.

FETA is a PDO and is not Generic

In October, 2002, the EU issued a regulation approving FETA as a PDO within the EU’s own sui generis GI registration system. Since then, a cheese marketed within the EU as FETA must be produced from the milk of ewes and goats of local breeds that have been reared in a “traditional” manner. Moreover, the feed for such animals must be based on the flora in the pastures of the designated areas in mainland Greece and the island of Lesbos.  (Other Greek islands and archipelagos were excluded because they do not enjoy the necessary natural or human factors, such as traditional production methods.) The FETA regulation, which was based on studies and detailed questionnaires completed by the EU member states, concluded that FETA was not generic within the EU and was always associated in the public mind with Greece (even if some producers sold French or Danish-made cheeses as “real” Feta to immigrant communities.)

Feta Cheese from Ewe and Goat Milk imported from Greece. Copyright, 2018, the author.

When is a Cheese Name Generic?

Thanks to the spread of the EU-FTAs, the conclusion that FETA is not a generic term for a sharp tasting white cheese from sheep and goat’s milk now has implications far beyond the borders of the EU.  Like the earlier TRIPS obligations, the obligations under the EU FTAs require a signatory country to prevent infringement of agreed GIs and to take steps to enforce against such infringements. Signatory countries must protect against any direct or indirect commercial use of a registered GI for comparable products to those covered by the GI registration or where the name of a product exploits the reputation of the protected GI. Effectively, this amounts to a requirement to block the importation or sale of a product within their jurisdictions that uses a protected GI as the name for products that do not meet the GI registration requirements for place or method of manufacture.  Thus, no lawful use of ASIAGO for cheese sold within China if the cheese so marked does not originate from the Asiago plateau of the Veneto Region of Italy. In addition, signatory countries must protect against misuse, imitation or evocation of the GI, even if the true origin of the product is indicated on a label. Terms like “in the style of” “type” or “imitation” are also outlawed.  Thus, a US cheese exported to China and labeled “GORGONZOLA Style” would run afoul of China’s enforcement obligation under the new EU FTA.  Any other false or misleading information about the provenance, origin or nature of the essential quality of the product designated by a protected GI would also be prohibited.

A public domain for Cheese Names?

In effect, US cheese producers are arguing that some cheese names have fallen into a supposed worldwide “public domain” for names and no longer indicate the geographic origin of a product. This claim is bolstered by other New World dairy associations, whether in Australia or Uruguay, whose origins harken to European immigrants who introduced into their new countries the cheesemaking processes they learned in the Old World.  Today, Wisconsin’s Bel Gioioso Cheese company, headed by a fourth generation Italian-American, is among the most outspoken backers of the claim that certain cheese names have become generic and thereby ineligible for protection as GIs.

But what does it mean for a cheese name to be a “common name” or “generic” name? What is the appropriate country of reference?  CCFN, the US trade association, argues that the widespread production and global distribution of American cheeses with names like fontina, asiago, munster and, yes, feta, have caused those terms to become dissociated from any particular place of production. Rather, argues CCFN, the content of cheeses is (or should be) regulated by the Codex Alimentarius health and safety food standards of the World Health Organization and the Food and Agriculture Organization of the United Nations. And any producer meeting those standards should be free to use compliant cheese names. But the Codex Alimenatarius website explains that it is independent of local law and not determinative with respect to food labeling.

The opposite point of view is espoused by OriGins, the Organization for an International Geographical Indications Network, a nonprofit NGO based in Geneva that promotes the advancement of GI protections and represents the interests of some 500 producer associations from more than 40 countries. For OriGins members like the regional producers’ consortia for QUESO MANCHEGO (Spain) or COMTE cheese from France, advocating for GIs is a question of fairness: protecting producers’ hard-won reputations and safeguarding the consuming public by assuring authentic products are available in the marketplace. Not overlooked is the revenue potential for sophisticated products that benefit from strict controls over production locale and methods.

But for GI and trademark analysis, the appropriate reference to determine whether a name has become generic is the consuming public, not an agricultural regulatory body.  But how can a producer from the U.S. or elsewhere establish in China or Japan or a Mercosur country that FONTINA has achieved common name status in that place and is not understood as originating in the Val d’Aosta in Italy? Will this require consumer surveys? What if a product is being introduced for the first time to new cheese consumers in a country that was not traditionally a dairy-minded place? Can there be any grounds to argue genericness in that case?

Cheese made in Wisconsin USA with the suggestion of a Greek connection. Copyright, 2018, the author.

Despite some built-in safeguards under the FTAs, US producers have complained that they are not broad enough. For example, there is a period for objection or submission of statements to persuade a local authority that recommended GI protection should not be extended on either of two possible grounds: first, that granting GI protection would undermine or infringe prior established trademark rights in that jurisdiction; and, second, that the GI has prior status as a common name (i.e. generic name) for the product in question. Equally troubling for US producers have been perceived obstacles in intervening in national processes that may be only quasi-public and for which comment periods and deadlines may be opaque at best.

South of the Border Down Mexico Way

Mexico is shaping up to be the real battleground. The US dairy industry has a long and prominent presence in the Mexican market. At this moment, US is trying to renegotiate the terms of the North American Free Trade Agreement (NAFTA) that came into force on January 1, 1994.  If Mexico were to agree with the EU that FETA is a protected GI, Mexican companies could no longer import Wisconsin feta cheese made from cow’s milk without penalty. To be sold lawfully in Mexico, such cheese would have to be re-labeled something else entirely that might jar Mexican consumers accustomed to the prior names. “Wisconsin Salty Crumble Cheese” perhaps?

A joint letter from top executives of the U.S. National Milk Producers Federation, the U.S. Dairy Export Council and International Dairy Association to Secretary of Agriculture Sonny Perdue and the U.S. Trade representative Robert Lighthizer captured the intensity of what’s at stake in a $400 million annual export business: “..[w]e ask that you make neutralizing Europe’s attacks on U.S. dairy products a NAFTA goal. Mexico, is by far, our largest and most important dairy market.”

As reported in Agri-Pulse.com, Secretary Perdue has taken up the salvo: “(Trading partners with the U.S.) better be careful about accepting any sort of geographical indicators from the EU,” the Secretary was quoted as saying. Tough talk from the folks who withdrew from various multilateral FTA negotations in recent years.

Mercosur countries, take note. You may be next on the receiving end of such attacks.

In our next blog, we’ll look at how the growing pressure from EU trade negotiators to recognize and protect additional GIs for wine beyond those included in TRIPS is putting pressure on the California wine industry.

Pass the soave, won’t you, with that Watermelon F*** Salad?

 

 

 

 

 

 

[1] A report prepared by O’Connor and Company for the European Commission, available today on the website of the European Union.

 

 

 

It’s almost August, signaling time to really kick back and relax in Europe. In the U.S., it’s time to buy back-to-school supplies. Vive la différence!  In our last post, we looked at the significance of July 18th in Spanish history and copyright law and examined how the works of the prolifically gifted poet and playwright Federico Garcia Lorca passed into the public domain in Spain in January 2017 yet remain protected in the United States. What happened in August 1936 in Granada and in 1995 in the U.S. to create this surprising outcome?

Lorcas Execution; Term of Copyright in Spain

We recounted last time how Lorca celebrated his saint’s day at his family home outside of Granada on July 18, 1936 in a climate of increasing political unrest. By late July, local army garrisons sympathetic to General Francisco Franco’s Nationalist Movement took control of the city and province of Granada. Lorca’s brother-in-law had been arrested earlier that month for his Republican sympathies. Alarmed at these developments, Lorca sought refuge in the home of friend and poet Luis Rosales whose brothers were leading members of the Nationalist Movement; despite the Rosales family’s efforts to shield him, Lorca was arrested on August 16th. The Lorca family sought to hire a lawyer to defend him against the trumped-up charges of subversion and Bolshevik connections. No such trial was scheduled. Instead, Lorca was secreted away from the Granada jail the following day and taken to a makeshift prison in the countryside. Together with other political prisoners, he was shot by firing squad in the open air in the predawn hours of August 18, 1936. (As there were no sympathetic surviving eyewitnesses, the date is debated by scholars; perhaps it was August 19th.) Lorca’s remains have never been definitively identified.

During Lorca’s lifetime, copyright for literary works was governed by Spain’s 1879 Copyright Act which treated copyright as a type of property similar to the French approach of the late 18th century. Copyright in Spain was absolute and exclusive: unauthorized uses of protected works would establish liability for a user, although penalties were not clearly delineated. Spain signed the Berne Convention in 1886 which extended reciprocal protections for nationals of Berne member countries without the need for formalities; works by Spanish nationals, however, remained governed by the 1879 Copyright Act which required registration and publication to secure copyright protection.  As we saw previously, Lorca dutifully registered his literary works with the Registro Nacional, including copies of his dramatic manuscripts.  (Dramatic works that were publicly performed with the permission of the author did not require print publication in order to be protected.) The term of protection under the 1879 Copyright Act was 80 years from the death of the author. Thus, all of Lorca’s works — whether the precocious Libro de Poemas published when Lorca was only 23 years old or Blood Wedding performed in 1933 — were entitled to a term of copyright protection of “life plus 80” years.  That Lorca was aware of his rights can be inferred from his membership in the Spanish collecting society, Sociedad de Autores Y Editores (SAE) which managed the remuneration for exploitation of authors’ works during the term of protection. Lorca enrolled in SAE 1932 in the categories of composer, author and dramatic author, evidence of his multifaceted talents and his attentiveness to his rights.

Lorca’s life was cut short prematurely. Thanks to the unusually long term of protection for copyright in Spain, his literary and dramatic works remained protected in Spain for many years after his untimely death. When Spain enacted a new copyright law after the end of the Franco regime and the restoration of democracy, this long term was preserved for works created under the 1879 Act whose authors had died prior to December 7, 1987. Authors who died after that date and authors who created works under the new 1987 Copyright Act would enjoy a term of protection of “life plus 70” years. Under Spain’s Copyright Act of 1996 which brought it into line with the then European Community (later European Union) copyright regimes, a term of protection lapses on January 1st of the year following the year in which an author dies. Hence the significance of January 1, 2017 for the passage of the works of Lorca into the public domain in Spain.

Restoration of works under the URAA

But across the Atlantic, other developments conspired to create the means for Lorca’s works to remain under copyright protection for an even longer time. In connection with the U.S. bid to join the World Trade Organization (WTO), President Bill Clinton signed into law the Uruguay Round Agreements Act (URAA), effective January 1, 1995.  The URAA added a new Section 104(A) to the U.S. Copyright Act under the title “Copyright in Restored Works.”  This new law restored to copyright protection those foreign works (created by non-U.S. authors) that had fallen into the public domain in the U.S. for any number of reasons, but that were still protected in their source country. Failure to comply with copyright formalities required in the U.S., such as registration, renewal after a first term of 28 years, or affixation of proper copyright notice was a qualifying reason.  Importantly, under the URAA, a “restored work” must not have been in the public domain in its source country due to expiration of copyright term. Once restored to copyright in the U.S., an eligible work would enjoy copyright protection for the remainder of the term that the work would have otherwise been granted if the work had not entered the public domain in the U.S. The rule applied under the URAA called for a term of 75 years from the date of first publication of the work, later extended to 95 years, as explained below.

Spanish works became eligible for restored protection in the U.S. as of January 1, 1996, the date established in the public law enacting the URAA for those countries that had both adopted the Berne Convention and joined the WTO. Spain satisfied both conditions. (Restoration was not available if a work had already enjoyed its full term of protection in the U.S., such as works that had been registered and properly renewed in the U.S. under the 1909 Copyright Act and run their course for 56 years.) In the case of Lorca, it was presumed that all his works were still under protection in Spain as of January 1, 1996. As part of its 1987 Copyright Act, Spain provided for automatic recovery of all works that had fallen into the public domain due to lack of compliance with formalities required under Spain’s 1879 Copyright Act. Thus, even if some works had not complied with Spanish formalities before Lorca met his death, such works would have been restored to protection in Spain by virtue of the 1987 Act and were therefore eligible for later restoration in the U.S. under the URAA.

The URAA provided a scheme whereby foreign copyright owners could provide notice of their intention to restore protection in works that had likely been exploited by third parties during a time when they were understood to be in the public domain in the U.S.  Those third parties were called reliance parties, and the notice required to be filed by those seeking restoration was called the Notice of Intent or NOI. A 24-month window from January 1, 1996 was provided for foreign owners from Berne and WTO member countries to enforce their rights against reliance parties by publishing a NOI in the Federal Register. Through a British attorney, the Lorca heirs duly filed a NOI on May 8, 1997 with the U.S. Copyright Office with respect to 16 dramatic works by Lorca. (Other notices were filed later that year to restore protection to Lorca’s poems and compositions.) Blood Wedding was the first listed dramatic work and the one by which the May 8th NOI is filed and catalogued.  By this filing, the heirs gave notice to publishers, producers, filmmakers, theaters, and others that they were reclaiming exclusive rights in the listed works. Any reliance parties had a limited time under the statute to continue their exploitation of the listed works before either discontinuing use or negotiating terms with the heirs to continue exploitation. Going forward, the exclusive rights to authorize translations, adaptations, publications, derivative works, to perform any plays or broadcast any readings of poetry or musical adaptations would require the prior permission of the heirs.

Fast Track Legislation for WTO Membership and Unforeseen Consequences

Surprisingly, there is no provision in the URAA that would curtail the term of copyright protection granted to a restored work if the term of protection in the country of origin (or source country as it was called in the URAA) is shorter that the term in the U.S. The legislative history of the URAA seems to suggest that, in adopting the restoration provisions, Congress was primarily motivated by a desire not to allow the U.S. to become subject to a WTO dispute resolution mechanism for failure to comply with the terms of the new trade agreement on intellectual property that accompanied the WTO, the Agreement on Trade-Related Aspects of intellectual Property Rights (TRIPS Agreement). The TRIPS Agreement mandated that all WTO members be fully compliant with the Berne Convention. The Berne Convention, in turn, required abolition of formalities in copyright protection.  In enacting the URAA, Congress discharged its commitment to abide by the TRIPS Agreement and thereby avoided the specter of a WTO proceeding against the U.S. in its early years. The policy intent appears to have been to harmonize the years of protection for restored works to what was available for works by U.S. authors. The language of the URAA was not negotiated or disturbed by Congress from the text presented to it by the Office of the U.S. Trade Representative which oversaw the U.S. entry into the WTO.  Rather, the URAA was adopted as whole cloth in the WTO membership “package” that Congress approved as part of its “fast track” authorization authority. The fact that anomalies might crop up in certain cases in ensuing years did not appear to dissuade US legislators from adopting a simple and (what they saw as a) straightforward approach to restoration of term of protection. In doing so, Congress ignored the “rule of the shorter” term which is permissible under the Berne Convention. If Congress had adopted the rule of the shorter term, the duration of restored U.S. copyrights would have lasted only until the expiration of terms in the respective source countries. Instead, the URAA restored protection in foreign works for the full term of U.S. copyright protection.  At the time URAA was enacted into law, works that would have been in their renewal terms would be entitled under Section 304 (b) to a term of 75 years from the date copyright was originally secured. This period was extended again a few years later for an additional 20 years under the Sonny Bono Term Extension Act, signed into law by President Bill Clinton in late October, 1998.  For works created under the 1909 Act, or foreign works created during the time period governed by the 1909 Act (until January 1, 1978), the starting marker date for calculating the term of protection would be the date of first publication of the work.

As a result, some foreign works created in the 1920s and 1930s, including those by Lorca, enjoy a longer term of protection in the U.S. because of restoration than they would have enjoyed at home. For Bodas de Sangre (Blood Wedding,) Lorca’s stirring drama of love and revenge first published in 1933, protection will run in the U.S. until 2028. For La Casa de Bernarda Alba (The House of Bernarda Alba), first published in Madrid to good reviews in the spring before Lorca’s untimely death, the lapse date for U.S. copyright protection would likely be 2031.

It would be an interesting mid-summer exercise to examine the lists of works restored under URAA –including many classic films from Italy, Spain, France, Argentina and Russia and numerous Czech and Russian musical compositions — to determine how many noteworthy works with publication dates after 1923 are thought to be in the public domain in the U.S., but in fact, remain protected under URAA’s very wide umbrella.

This copyright challenge is not for the faint of heart. It definitely calls for another glass of sangria! But don’t forget the cheese.

Next time, we’ll look at the worldwide advance in protections for geographical indications to be enforced as part of new EU trade agreements to which the U.S. is not a party. Love your California Feta or Wisconsin Asiago but traveling abroad? You may be surprised by developments in Canada, Japan, China and the Mercosur countries.

This blog piece is adapted from the article “Federico Garcia Lorca: The Paradox of Duration of Copyright by the author that appeared in the Journal of the Copyright Society of the USA, Vol. 65, No. 1, Winter 2018.