Law Commons^™

Chocolate, Fashion, Toys And Cabs: The Misunderstood Distinctiveness Of Non-Traditional Trademarks, Irene Calboli

Irene Calboli

Editorial Excerpt:

What do Cadbury, Toblerone and Kit-Kat chocolates, the Rubik’s Cube and Lego mini-figurine toys, Louboutin shoes, Bottega Veneta bags and London Taxi Company cabs all have in common? These products have been, along with several others, protagonists of the rising trend of registering shapes and other non-traditional trademarks in a variety of countries, and then, in several cases, protagonist of ensuing litigation addressing the validity of these marks. To a large extent, the review panels and the courts involved in these cases have declared several of these marks invalid or have reduced their scope considerably. Hence, these cases …

Time To Say Local Cheese And Smile At Geographical Indications Of Origin? International Trade And Local Development In The United States, Irene Calboli

Irene Calboli

In this Article, I offer some considerations on a possible compromising solution for the controversy between the European Union (EU) and the United States (U.S.) on the regulation of geographical indications of origin (GIs) as part of the negotiations in the Transatlantic Trade and Investment Partnership (TTIP). Notably, I advocate that the EU and the U.S. consider adopting a solution similar to that adopted in the Canada and European Union Comprehensive Economic and Trade Agreement (CETA). In particular, I note that, even though CETA accepted several of the EU's requests to claw-back names that were not previously protected in Canada, …

Geographical Indications Between Trade, Development, Culture, And Marketing: Framing A Fair(Er) System Of Protection In The Global Economy?, Irene Calboli

Irene Calboli

This chapter analyzes some of the topics on the current debate involving geographical indications (GIs) of origin that will be further elaborated by the contributors to this volume from a variety of perspectives and angles. As the title indicates, this volume focuses on GI protection “at the crossroads of trade, development, and culture,” with a specific focus on the countries in the Asia-Pacific region. This choice is due primarily to the fact that the analysis of issues related to GI protection in this region is, to date, not as extensive as the analysis in other regions, particularly in the Western …

A Call For Strengthening The Role Of Comparative Legal Analysis In The United States, Irene Calboli

Irene Calboli

This Essay highlights the importance of comparative legal analysis with particular emphasis on the role that this methodology could play for intellectual property scholarship in the United States. In particular, this Essay suggests that U.S. scholars could consider turning with more frequency to comparative legal analysis as an additional methodology to use in their research. Yet, the objective of this Essay is not to suggest that U.S. scholars should engage in comparative legal analysis in lieu of other types of research methodologies. Instead, this Essay simply supports that comparative legal analysis could play a larger role compared to the one …

Socio-Economic Aspects Of Geographical Indications, Irene Calboli, Daniel J. Gervais

Irene Calboli

Proposed Secondary Liability Regimes For Trademark Infringement Online: Commentary, Irene Calboli, Jane Ginsburg, Amy Cotton, Bob Weigel, Bruce Rich, Miguel Peguera

Irene Calboli

No abstract provided.

Betty Boop And The Return Of Aesthetic Functionality: A Bitter Medicine Against "Mutant Copyrights"?, Irene Calboli

Irene Calboli

This article offers a brief overview of the history and developments of the doctrine of aesthetic functionality in the United States and examines the recent decisions in Fleischer Studios, Inc v AVELA, Inc . In particular, the article argues that the courts in Fleischer added an important element to the interpretation of the doctrine, namely the fact that the courts seemed willing to resort to aesthetic functionality to counter the consequences resulting from the practice of using trade mark law as an additional form of protection for copyrighted, or once copyrighted, creative works.

In Territorio Veritas? Bringing Geographical Coherence Into The Ambiguous Definition Of Geographical Indications Of Origin, Irene Calboli

Irene Calboli

In this article, I touch upon a topic that remains highly controversial in international intellectual property law—the legal protection of geographical indications of origin (GIs): Chianti wine, Champagne sparkling wine, Gorgonzola cheese, Parma ham, Darjeeling tea, Colombian coffee, and other terms that indicate (or are supposed to indicate, as I will develop in this article) the geographical origin of the products they identify. In line with the theme of this special issue of the WIPO Journal, I focus on the requirement of “geographical origin” upon which the protection of GIs has been historically built and is generally justified. In particular, …

Overlapping Copyright And Trademark Protection: A Call For Concern And Action, Irene Calboli

Irene Calboli

In this Article, I tackle a controversial topic-the overlapping trademark and copyright protection that can apply to creative works such as fictional characters, pictures, video clips, and songs. In particular, I highlight the possible negative consequences that granting trademark protection to these works-concurrently or after the expiration of copyright protection- can have on the societal bargain upon which copyright protection is built and justified. To date, scholars have only limitedly addressed these consequences, and more academic attention is needed in this area. In contrast, the advantages of trademark rights in creative works (in their entirety or in separated features of …

Recent Developments In The Law Of Comparative Advertising In Italy – Towards An Effective Enforcement Of The Principles Of Directive 97/55/Ec Under The New Regime?, Irene Calboli

Irene Calboli

On February 25, 2000, the Italian Government adopted Legislative Decree No. 67, which enacted Directive 97/55/EC amending Directive 84/450/EEC concerning misleading advertising, so as to include comparative advertising. Contrary to what one could have expected in a country that has traditionally banned comparison in advertisements, Italy was one of the first among the Member States to implement Directive 97/55/EC. In order to allow consistent enforcement practices, however, the adoption of the new law must be followed by a profound change in the ways Italian courts and legal operators have approaches this issue so far. This Article explores this issue and …

The Sunset Of Quality Control In Modern Trademark Licensing, Irene Calboli

Irene Calboli

Historically, based on the premise that trademark protection is about consumer welfare, trademark law has allowed trademark licensing only as long as licensors control the quality of the products bearing the licensed marks. Ever since its adoption, however, this rule has been difficult to enforce because it hinges on a concept that is ambiguous and difficult to frame in a legal context: quality control. Unsurprisingly, the consequence has been inconsistent case law and much uncertainty as to what represents valid licensing. In addition, in the past decades, courts have proven increasingly reticent to strictly apply this rule and have declared …

International Intellectual Property Scholars Series: Reviewing The (Shrinking) Principle Of Trademark Exhaustion In The European Union (Ten Years Later), Irene Calboli

Irene Calboli

Ten years ago, I published an article in the Marquette Intellectual Property Law Review titled “Trademark Exhaustion in the European Union: Community-Wide or International? The Saga Continues.” In that article, I described the development of the principle of trademark exhaustion in the European Union (EU) and analyzed the interplay among trademark protection, trademark territoriality, and the treatment of the parallel importation of gray market products—unauthorized genuine goods imported from foreign countries—under Article 7 of the Trademark Directive (Article 7). In this Essay, I continue to explore, ten years after my 2002 article, the development of the principle of trademark exhaustion …

Trademark Assignment With Goodwill: A Concept Whose Time Has Gone, Irene Calboli

Irene Calboli

Historically, starting from the premise that trademark protection is about consumer welfare, trademark law has required trademarks to be assigned with the goodwill of the business to which they refer, to deter assignees from changing the quality of the marked products. Yet, ever since its adoption, this rule has been hard to enforce because it hinges on a concept that is ambiguous and difficult to frame in a legislative context: trademark goodwill. Additionally, regardless of this rule, trading in trademarks has been a recurrent practice in the business world, and trademark practices have traditionally provided instruments to assist this trade. …

The Case For A Legislative Amendment Against Accessory Copyright For Grey Market Products: What Can The U.S. Learn From Singapore And Australia, Irene Calboli, Mary Lafrance

Irene Calboli

In this article, we suggest that the U.S. Congress could implement a legislative provision prohibiting copyright protection for incidental product features in the context of parallel imports. The U.S. would not be the first country to implement such a provision. In 1994, Singapore pioneered the adoption of a similar provision, which was introduced as an amendment to the SG 1987 Copyright Act. A few years later, in 1998, Australia incorporated a similar amendment to its Aust. Copyright Act 1968. In this article, we analyse in detail the Singapore and Australia provisions and, building upon these provisions, we suggest …

Corporate Strategies, First Sale Rules, And Copyright Misuse: Waiting For Answers From Kirstsaeng V. Wiley And Omega V. Costco (Ii), Irene Calboli

Irene Calboli

In this Essay, I continue my previous analysis of the first sale rule (or principle of exhaustion) in intellectual property law in the context of international trade. In particular, I highlight the differences between the first sale rules in trademark and copyright law--in particular, international first sale in trademark law and national first sale (at least to date) in copyright law--and criticize the corporate trend to invoke copyright protection for incidental product features of otherwise functional and uncopyrightable products in order to restrict the importation of gray market (genuine) products into the United States. During the past decade, corporations have …

Market Integration And (The Limits Of) The First Sale Rule In North American And European Trademark Law, Irene Calboli

Irene Calboli

This Article explores the intricate relationship between the exercise of trademark rights and the free movement of goods in the marketplace, and considers the effectiveness and the limitations of the principle of trademark first sale (also known as trademark exhaustion) in promoting the free movement of goods across international borders, notably across members of free trade areas. In particular, this Article examines the application of the principle of trademark first sale and the resulting process of market integration that has characterized to date the members of NAFTA and the European Union. Based upon this comparison, this Article argues that the …

The Case For A Limited Protection Of Trademark Merchandising, Irene Calboli

Irene Calboli

Since its judicial creation in the 1970s, strong controversy has surrounded the practice of trademark merchandising. Trademark scholars have generally opposed merchandising rights because of the departure from the traditional interpretation of trademark law—protecting consumers and market competition—in favor of a direct protection of trademark value. Despite this opposition, courts and Congress have favored the acceptance of this practice by broadening the scope of trademark protection and by introducing the concept of confusion as to the products’ “sponsorship” or “affiliation” as part of the standard for trademark infringement. Not surprisingly, trademark scholars have criticized these developments but have not offered, …

What If, After All, Trademarks Were Traded In Gross, Irene Calboli

Irene Calboli

The conditions upon which trademarks should be "traded" --that is, assigned and licensed in the marketplace--have traditionally been at the center of the trademark debate. Historically, based upon the assumption that trademarks can be protected only as conveyers of commercial information and as symbols of business goodwill, trademark law has prohibited trading in trademarks "in gross" and has required that trademarks be assigned "with their goodwill" and licensed only as long as licensors control the quality of the products. Yet, these criteria have been proven controversial and difficult to enforce because they hinge on two concepts that are ambiguous and …

Expanding The Protection Of Geographical Indications Of Origin Under Trips: Old Debate Or New Opportunity, Irene Calboli

Irene Calboli

Geographical indications of origin (GI), their definition, and rationale for protection have historically been the subject of heated debates in the international community. Countries have long quarreled about the extent of protection of "their" GI, that is, the names they used to identify products grown or manufactured on their soil. Fierce defenders of GI protection, European countries have traditionally advocated that GI should not be used by unrelated parties because GI identify the unique qualities, characteristics, and reputation of the products to which they are affixed; thus, should others use GI improperly, consumers would be confused as to the origin …

Reading The Tea Leaves In Singapore: Who Will Be Left Holding The Bag For Secondary Trademark Infringement On The Internet, Irene Calboli

Irene Calboli

This Article explores the issue of secondary liability in Singapore trademark law, with particular attention to intermediaries on the Internet, including Internet service providers (ISPs), e-commerce companies, search engines, website operators, online financial service providers and social media sites. Section 27(5) of the Singapore Trade Marks Act attributes liability to those who use a mark "knowing or having reasons to believe" that such use is not authorized by the trademark owner or licensee. More precisely, the provision excludes trademark liability for those "persons" who use a trademark in the course of trade, namely "for labelling or packaging goods" or as …

Trademark Exhaustion In The European Union: Community-Wide Or International--The Saga Continues, Irene Calboli

Irene Calboli

This Article analyzes the principle of "trademark exhaustion" or "first-sale rule" in the European Union (EU), with particular attention to the language and different interpretations of Article 7(1) of the First Council Directive 89 104 EEC of December 21, 1988. Traditionally, most jurisdictions define the extent of trademark exhaustion as either "national" or "international" exhaustion, depending on whether the rights granted by a mark are considered exhausted only in the domestic territory or also in foreign jurisdictions. Because of its nature as a regional integration of sovereign countries, the EU has historically favored a compromising approach toward the issue, and …

The Sunset Of "Quality Control" In Modern Trademark Licensing, Irene Calboli

Irene Calboli

Historically, based on the premise that trademark protection is about consumer welfare, trademark law has allowed trademark licensing only as long as licensors control the quality of the products bearing the licensed marks. Ever since its adoption, however, this rule has been difficult to enforce because it hinges on a concept that is ambiguous and difficult to frame in a legal context: quality control. Unsurprisingly, the consequence has been inconsistent case law and much uncertainty as to what represents valid licensing. In addition, in the past decades, courts have proven increasingly reticent to strictly apply this rule and have declared …

International Intellectual Property Scholars Series: Reviewing The (Shrinking) Principle Of Trademark Exhaustion In The European Union (Ten Years Later), Irene Calboli

Irene Calboli

Ten years ago, I published an article in the Marquette Intellectual Property Law Review titled “Trademark Exhaustion in the European Union: Community-Wide or International? The Saga Continues.” In that article, I described the development of the principle of trademark exhaustion in the European Union (EU) and analyzed the interplay among trademark protection, trademark territoriality, and the treatment of the parallel importation of gray market products—unauthorized genuine goods imported from foreign countries—under Article 7 of the Trademark Directive (Article 7). In this Essay, I continue to explore, ten years after my 2002 article, the development of the principle of trademark exhaustion …

Trademark Assignment With Goodwill: A Concept Whose Time Has Gone, Irene Calboli

Irene Calboli

No abstract provided.

Trademark Exhaustion In The European Union: Community-Wide Or International? The Saga Continues, Irene Calboli

Irene Calboli

Dr. Calboli discusses trademark exhaustion in the European Union. She proposes an international exhaustion standard to replace the community-wide exhaustion standard. In an international system, a trademark owner would exhaust his rights in other national jurisdictions when trademarked goods are placed on the market in any national jurisdiction where the trademark owner enjoys protection. Accordingly, the trademark owner will not be free to prevent international importation of genuine products bearing his trademark. Dr. Calboli describes the development of the community-wide exhaustion standard and its interpretative problems as part of the Trademark Directive. She then proposes changing to an international exhaustion …

Market Integration And (The Limits Of) The First Sale Rule In North American And European Trademark Law, Irene Calboli

Irene Calboli

This Article explores the intricate relationship between the exercise of trademark rights and the free movement of goods in the marketplace, and considers the effectiveness and the limitations of the principle of trademark first sale (also known as trademark exhaustion) in promoting the free movement of goods across international borders, notably across members of free trade areas. In particular, this Article examines the application of the principle of trademark first sale and the resulting process of market integration that has characterized to date the members of NAFTA and the European Union. Based upon this comparison, this Article argues that the …

Expanding The Protection Of Geographical Indications Of Origin Under Trips: "Old" Debate Or "New" Opportunity?, Irene Calboli

Irene Calboli

This work briefly analyzes the issue of (geographical indications of origin) GI protection pre- and post-TRIPs and considers whether extension of the protection set forth by TRIPs is desirable for the international community. First, the work provides a brief overview of GI, the traditional rationale for their protection, and the protection granted thereof before the adoption of TRIPs. Next, the analysis turns to a description of the status of the law under TRIPs and the failed diplomatic agenda to expand the current protection. The recent developments on the debate on GI are explored, particularly for wine and spirits, with an …

Reviewing The (Shrinking) Principle Of Trademark Exhaustion In The European Union (Ten Years Later), Irene Calboli

Irene Calboli

No abstract provided.