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.

 

Summer calls out for a cool drink and good reading material. In today’s blog entry, we’ll look at the significance of the months of July and August in terms of literary copyright history. Grab your sangria.

Part I: July 18th is celebrated in many European countries as Saint Frederick’s Day, commemorating the murder in 838 of Frederick, Bishop of Utrecht, known for his piety and erudition. In Spain, St. Frederick’s Day holds special significance. It was the saint’s day that the Granadan poet and playwright Federico Garcia Lorca (Lorca) shared with his father Federico. On July 18, 1936, the family was celebrating at its country home at the Huerta de San Vicente outside Granada. The poet had returned home from Madrid just days earlier, lionized in the local press for his recent successes on the Madrid stage, having completed the manuscript of a new play that would become The House of Bernarda Alba.

But darker forces were also at work on July 18, 1936. From the Canary Islands, General Francisco Franco broadcast a message to “take back Spain” from the democratically elected Spanish Republican government. He called upon troops and sympathizers in Spanish Morocco and mainland Spain to join the Nationalist uprising and take up arms, thereby launching the Spanish Civil War that lasted for three long and exceptionally bloody years. A few weeks later in Granada, Lorca was caught in those cross hairs and arrested by sympathizers of Franco’s Falangist movement. The charges were trumped up; he was said to possess a radio with which he ostensibly communicated with “Bolsheviks.”  More likely, Lorca’s anti-Fascist and pro-Republican leanings, as well as his defiance of middle class Catholic norms (as portrayed in his plays and persona life), enraged local commanders and would-be politicians in Granada.

Lorca met his untimely death at the age of 33 in 1936 (more details in our August blog entry) having already published numerous collections of poetry (Book of Poems, Poems of Deep Song, Gypsy Ballads, Poet in New York), plus several plays that had been produced in Spain and Latin America (The Shoemakers Prodigious Wife, Blood Wedding, Yerma, Dona Rosita the Spinster, and The House of Bernarda Alba.) In Spain, this body of work finally passed into the public domain on January 1, 2017, following the conclusion of the calendar year (2016) that marked 80 years since his death.  Spain has applied a lengthier term of protection to the works of certain authors than the European Union’s norm of “life plus 70” years.  The “extra decade” of protection for the works of Lorca had created a sense of pent up demand from publishers, theatrical producers and creators who were eager to bring Lorca’s works to the public but chafed at the control and conditions imposed by the Lorca heirs. The lapse of copyright protection means that in Spain publishers, writers, translators, playwrights, and others are finally free to reproduce, perform, adapt or create new derivative works without seeking consent from the Fundación Federico Garcia Lorca that represented the heirs’ interests.

And yet, paradoxically, Spain’s most famous writer since Cervantes has found his enduring longevity far from home: across the Atlantic in the United States. Due to the way the U.S. Congress “fast tracked” the legislation by which the U.S. joined the WTO in 1995, known as the Uruguay Round Agreements Act (URAA), copyright protection for certain foreign restored works, including the works of Lorca, will remain in effect in the United States for years to come.

How did this situation arise? Before answering that question, let’s review the status of copyrights laws in Spain that governed the protection for his prodigious output of poems and plays. During Lorca’s lifetime, copyright for literary and dramatic works in Spain was governed by the 1879 Copyright Act which granted a term of protection of 80 years from the death of the author. Under that Act, Spanish authors were required to register their works with the Registro Nacional (National Registry) within one year of the date of publication to affirm title and secure copyright protection; however, the work did not have to be published in order to be registered, since protection attached from the moment of creation. Dramatic works that were performed on stage and also registered with the Registro Nacional received copyright protection whether or not the plays were also published by a drama service or literary house.  The Spanish copyright system of the day was thus more lenient toward authors than  the U.S. system of the period governed by the 1909 U.S. Copyright Act (the 1909 Act) which still abided by stricter formalities regarding the period within which registration of published works needed to be secured and which did not accord protection to dramatic works unless they were “fixed” in a tangible medium such as a printed play book (video recording not yet having been invented.)

When a democratic Spain adopted a new copyright law, effective December 7, 1987, it adopted the Berne Convention scheme by which an author’s right is made up of two distinct types: the economic or patrimonial right and the moral right.  The 1987 Copyright Act specifically incorporated the 80-year term of protection from the 1879 Act for the economic rights of authors who created their works under the 1879 Act and died prior to December 7, 1987.  This group included Lorca as well as other notable authors of the early twentieth century. The 1987 Copyright Act also carried forward the notion of authors’ moral rights which had first been adopted when Spain joined the Berne Convention in 1933. Moral rights today include the right to claim recognition for authorship of a work and the right to integrity of a work, restraining any distortions, modifications or alternations that are likely to prejudice the author’s legitimate interests or threaten his or her reputation, and the right to alter the work (subject to certain limitations.) Moral rights are descendible under Spanish law; in the case of Lorca, his moral rights descended to his heirs. Whether the moral rights of the Lorca heirs might still be in effect after the economic rights have gone into the public domain as of January 1, 2017 is an unsettled question; jurisprudence on the post-mortem exercise of moral rights is scant in Spain.

But the status of copyright protection for Lorca’s works in the Spanish language in the U.S. was problematic by the early 1990s. While several popular English-language translations of Lorca’s plays remained protected under US copyright law, it was thought that failure to abide by formalities like renewal and copyright notice required by the 1909 Act may have jeopardized full protection for the original Spanish works that had been created in the 1920s and 1930s. Perhaps this is what led the Lorca heirs to take advantage of the narrow window of opportunity afforded by the URAA to apply to restore copyright in his body of work. The heirs filed just such a Notice of Intent on May 8, 1997 with the US Copyright Office, which was published in the Register of the Copyright Office on August 22, 1997. The first listed work was Lorca’s chilling drama of revenge, Blood Wedding (Bodas de Sangre in Spanish.)

Under this Notice procedure, parties who had been using any of the listed Lorca works, relying on their status as public domain works, had a limited period to continue their use before negotiating with the heirs to obtain authorization or cease their use altogether. Once that period elapsed, the exclusive rights under copyright, including the right to authorize new translations or adaptations, belonged to the Lorca heirs; any public performances of the plays would henceforth require their prior permission and, correspondingly, payment of royalties.

Next time, we’ll look at the turn of events that led to the anomaly that Lorca’s works live on under U.S. copyright protection while now freely available in Spain.

Read the full article in the Journal of the Copyright Society of the USA.

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.

For our inaugural issue, and because it’s harvest time in California where we are located, we’ll devote space to a little understood form of intellectual property protection called geographical indicators or GIs that are about to become headline news. In the U.S., GIs can be protected as certification marks or perhaps collective marks through registration at the USPTO and some trademarks may incorporate geographic terms.  But other countries and the European Union have more elaborate sui generis systems for protecting and registering GIs; some treaties also protect GIs. This difference in approach and attitude is fueling tensions in several international arenas that have direct effects on producers in California and other states, and policymakers in Washington, D.C.

WIPO and Free Trade Agreements

Developments at the World Intellectual Property Organization (WIPO) in Geneva about Geographical Indicators (GIs) and new Free Trade Agreements (FTA) negotiated by the European Union (EU) with Canada, Japan and China in recent months will have direct bearing on the worldwide marketability of dairy and viticulture products, not only those originating in the U.S., but also those from other large exporting countries like Argentina and Australia. http://money.cnn.com/2017/07/04/news/economy/japan-eu-trade-deal-summit/index.html The EU FTA negotiations with the Mercosur countries of Argentina, Brazil, Paraguay and Uruguay began in early October in Buenos Aires and will continue through the end of this year. It’s likely the EU will seek to extend within the Mercosur countries the same protections it achieved for its list of GIs agreed earlier with Canada, Japan and China. Old World and New World norms in food culture are clashing, and the talks are peppered with old-fashioned trade policy maneuvers.

Your Feta or Greek Feta

The push for expanded GI protections has now reached international proportions. It affects the bottom line of US and other New World producers who argue that many Old-World designations for cheese in particular have become mere common names or generic terms for food items in North and South America and Asia and are no longer deserving of special protection. At stake is the use of such terms as Feta, Asiago, Gorgonzola or Fontina, among others, to label cheeses that move in the global marketplace. In this two-part article, we’ll look at the essential vocabulary for understanding this form of intellectual property protection and analyze the regulations and policy issues at play that may affect clients in these important industries.

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