This short paper, commissioned by UNCTAD for a conference in February 2004, and to be republished in a book on traditional knowledge, focuses on framework, or structural, issues, rather than on the substantive elements of sui generis systems for the protection of traditional knowledge. It considers the extent to which proponents must articulate the need for a completely new paradigm, or whether instead they can point to historical antecedents in the intellectual property system.
The principal impetus for the paper is the proposal of the Indian government that international law require the disclosure of the country of origin of genetic resources and related traditional knowledge in patent applications (and require compliance with the laws of the country of origin). This proposal is essentially an attempt to derogate from the principle of territoriality that pervades and is at the root of, international intellectual property law. That principle is most resolutely advocated and enforced in the patent context. In contrast, international trademark (and geographical indications) law - while firmly based upon the same general principle - has in several respects developed exceptions to that principle. These exceptions might provide the source for a range of options that countries might consider as the model for a system of traditional knowledge protection that likewise moves away from the principle of territoriality. An historical analysis of where resistance to such developments has been most acute in the field of trademark and geographical indications might also provide guidance to those seeking to construct an approach to traditional knowledge that encounters less resistance.
The paper conceptualizes the different departures from territoriality in trademark law and thus suggests analogous devices for the protection of traditional knowledge that could be developed along the lines suggested by the Indian government. This helps to identify the structural variables that countries should consider in fashioning a traditional knowledge regime that eschews a rigid commitment to territoriality.
The scope of Kellogg's influence might, at first blush, seem surprising. The Court was confronted by a relatively narrow issue of trademark and unfair competition law, and to a large extent was revisiting an issue it had decided forty years earlier. The Court's opinion was also quite short. To understand its significance, one must be aware of the full range of philosophical reasons that motivated Justice Brandeis, including opposition for broad intellectual property rights, a concern for competition, and support for a misrepresentation-based model of unfair competition law. And one must also delve into the intense commercial rivalry in the cereal industry - a rivalry conducted by an odd mix of evangelists armed with even odder theories about nutrition and health.
Ultimately, because a variety of rationales were offered by the Court for a conclusion upon which most would agree, the precise scope of the opinion has never been fully clear. These (perhaps purposeful) ambiguities might have prevented the opinion contributing to the clear development of areas of law that were directly addressed by the Kellogg Court. This partially explains the irony that the current Supreme Court has cited Kellogg in a number of trademark cases for a series of different propositions, but did not cite the case in the most recent effort to tackle the very question at issue in Kellogg (the scope of trademark protection for a product covered by an expired patent).
By the same token, however, Justice Brandeis' quiet efforts to supply a more fundamental (and long-term) statement about the philosophy of trademark and unfair competition law may have allowed the opinion to achieve significance, both judicially and legislatively, well beyond the narrow context of the type of case the Court was deciding. And those efforts to articulate a philosophy for trademark and unfair competition law, which do not spring as obviously from the text of the Kellogg opinion, but instead are more readily apparent from historical context, may also be important in the years ahead as scholars and policymakers consider whether trademark law has inappropriately become a law against misappropriation.
Second, I argue that although the principle of trademark territoriality has nominally remained constant since the conclusion of the Paris Convention, recent developments at both the national and international level suggest that the principle may have a different intensity today. Third, the paper begins an investigation of the ways in which the principle of territoriality should be revisited in light of the globalization of markets and concomitant changes in modern marketing practices. Although the multidimensional nature of the territoriality principle suggests that an overarching reconfiguration would be unwise and perhaps impossible, some shared dilemmas can be derived from analysis of discrete rules. If the territorial character of a rule reflects the intrinsic purpose of trademark law and is thus rooted in social practices that are already in flux, the character of these doctrines will almost inevitably mutate as the notion of territoriality evolves in line with social change. Such revisions will swim with the current of socially constructed territoriality. If, however, the territoriality of a doctrine instead mirrors the national nature of economic and political institutions, then efforts to revise the doctrines will first require altering the underlying institutional and policymaking apparatus. Moreover, in deciding whether particular territorial aspects of trademark law warrant reassessment, it is important to consider whether trademark law should be structured reactively to protect whatever consumer understandings or producer goodwill develops, or should it instead proactively seek to shape the ways in which consumers shop and producers sell or seek to acquire rights, thus shaping how the economy functions?
Finally, the paper briefly highlights the extent to which there is, or should be, an assimilation of the "territorial" and the "national." Analysis of the choices facing trademark law might be better achieved by consciously separating nationality and territoriality. Recognition of the territoriality of goodwill is linked to the basic purposes of trademark law, while nationality-grounded doctrines are more likely driven by economic policy and by institutional issues such as the practical demands of current political structures. Recognizing this distinction would assist in highlighting where reform is likely to be evolutionary and where modification of political structures - whether judicial or administrative - must first occur.
In prior work, we took up the question of the TRIPs Agreement's resilience to changes in domestic law. We argued that such resilience is necessary because information production is a dynamic enterprise. As new industries emerge and mature, nations must have the flexibility to modify their intellectual property rules to readjust the balance between public and private rights. In the course of that study, we examined approaches to TRIPs dispute resolution that could cabin the choices of legislation available to deal with emergent substantive problems, and which could distort the legal environment in which creative enterprises are conducted. In this piece, we continue our consideration of the resilience of the Agreement and its commitment to neo-federalism. Here, however, we move from a focus on outcomes to the dynamics of the legislative process, examining the extent to which TRIPs dispute resolution adequately accommodates the operation of each member's political economy as it relates to intellectual property lawmaking.
Frequently, as intellectual property lawmaking becomes fiercely contested, reforms can only occur when a balanced package of rules can be reached. We ask whether such deals (or perhaps which of such deals, depending upon the connection between the reforms) should be taken into account by WTO panels. We argue that when legislation represents offsetting benefits and detriments, respect for domestic political dynamics requires panels to consider constituent pieces of such legislation in the context of the package in which they were enacted.
In previous work, we questioned whether the jurisprudence that has developed with regard to the GATT's trade provisions should apply equally to intellectual property, noting that differences between trade and intellectual property policy mandated different approaches. Here we reiterate that position, but make something of a converse argument as well: there are commonalities between the problems that nations experience in executing their trade commitments and their intellectual property commitments. Thus, it is significant that in its early years, the GATT incorporated strategies that created flexibility and permitted nations to deal autonomously with matters of domestic trade; we argue that similar mechanisms are required in TRIPs jurisprudence, especially in the Agreement?s formative stage.
We also focus on the effect that TRIPs, as currently understood, has on domestic lawmaking. If WTO panel decisions intrude more into national law, might lawmakers begin to enact legislation in reliance on international invalidation of whole or parts of the enactment? Should formulation of domestic policy take this into account? Further, would the formalistic approach that has been taken to TRIPs jurisprudence benefit domestic lawmaking by reducing the effect of lobbying? Or would it simply induce more nuanced log-rolling, or the enactment of laws aimed at influencing intellectual property production but under a different legislative rubric (such as food and drug regulation or consumer law)? Indeed, answers to these questions might affect not only lawmaking at the national level but, in turn, the form of WTO dispute settlement. We go so far as to suggest that there may be a role for the (much-feared) nonviolation complaints in navigating these complexities.