New Affiliations!


I am very pleased to announce that I am now a contributing author on the Art & Artifice blog.  This art law blog is shared among five co-authors based in the U.K., Italy, and now the United States.  

My first entry is located here.
On May 21, a lawsuit was filed in U.S. District Court in Arizona seeking a declaratory judgment that Google is a generic term.  Essentially, this lawsuit, if successful, would deprive the term "Google" of any trademark protection.  Instead of serving to identify the source of Google's internet services and search engine, the term "Google" would be construed as a generic term that means using an internet search engine.  A link to the Complaint is available here.  

The plaintiff filed this lawsuit after Google had several hundred domain names containing the word "google" transferred away from him.  (Using specialized international arbitration proceedings, a domain name that contains a registered trademark may be transferred to the trademark owner if all the legal criteria are met--essentially a showing of "bad faith" on the part of the person who registered the domain name.)  The plaintiff claims he needs the domain names, but it unclear from the Complaint for what purpose and in what capacity he plans to use the domains.

Although the lawsuit seems just a touch far-fetched and even slightly comical, the suit could have major implications for Google if the plaintiff succeeds.  Having a trademark is great, having a registered, famous trademark is even better... but having a trademark that is so famous it becomes a generic word to describe a good or service, is not good.  Formerly registered trademarks that have become generic include: thermos, aspirin, laundromat, and videotape.  Registered trademarks in danger of becoming generic include: Astroturf, Band-aid, ChapStick, and Q-Tips.  Finding its trademark at risk, Xerox went on an anti-genericizing ad campaign--the ads contained an image of a zipper (another trademark gone generic) in an attempt to educate the public about proper use of a trademark.  Brands and intellectual property organizations also try to educate movie executives, writers, and editors in an attempt to influence the way trademarks are used in entertainment.  Google has been working for years to keep its mark out of the generic graveyard, but whether a federal judge will be persuaded remains to be seen...
Earlier this month Italian business man Diego Della Valle announced that he will be reviving the Elsa Schiaparelli brand to market very high end ready to wear and haute couture fashion. During the 1930's, Schiaparelli was an extremely influential fashion designer in Paris, rivaling Coco Chanel.  Schiaparelli was forced to close her business in 1954 due to the economic downturn and passed away in 1973.  Her work is currently on view at an exhibition at the Metropolitan Museum of Art Costume Institute alongside the works of Miuccia Prada. 

Commentators suggest that this kind of revival is part of a growing trend.  Designers of Schiaparelli's era are particularly attractive as their clothing harkens back to a far different time for fashion and shows extraordinary workmanship.  Indeed, French entrepreneur Arnaud de Lummen has made a business out of buying lifeless luxury brands in recent years.

Of course the intellectual property implications of Della Valle's announcement intrigued me.  Although Schiaparelli closed her business in the 1950's, the name, and the value of that name survived her.  As it turns out, rights to the name were sold to Della Valle in 2007.  Della Valle seems to have noble goals for the brand and plans to sell the clothing from only one location, the site of Schiaparelli's original shop, 21 Place Vendôme in Paris.  However, I can't help but feel a bit of a pang about the use of Schiaparelli's name.  She had an extraordinarily unique vision--a vision that was both informed by and transcendent of her time.  

I encountered this very engaging piece of street art while roaming around the Logan Circle neighborhood in Washington DC.  (I can't spend every minute networking at INTA, can I?)  
Those of you who keep up with this rather sporadic blog might recognize that I am a bit preoccupied with street art.  I see tremendous value in receiving individual voices (and unexpected surprises) within the urban landscape--a place generally reserved for the bombardment of advertising and carefully selected commissioned works.  This piece was particularly interesting because it encouraged viewer participation in a highly accessible way--asking a question every single one of us can answer.  It is a giant chalk board where anyone can write something she wants to do before she dies. (Chalk was provided).  I also find this piece interesting because it serves the purpose of preventing vandalism at a local bus stop in front of a walled-off property by inviting people to write on the wall.  Virtually everyone who passed either wrote on the wall, or stopped to read things written by others.  It was quite fascinating to read and to watch.

Another one of my favorites, a yarn-bombing in Seattle, where clever knitters put sweaters on the trees in a park next to the county courthouse.  Aside from being wonderfully colorful on a dark winter day in Seattle, this work also showcases the fact that street art can be impermanent and non-damaging.  I believe we benefit from this kind of visual diversity in our landscape and such artworks should be encouraged.
Greetings from Washington DC!  This is my first time attending the annual INTA meeting, and it has been a fantastic experience.  Of course, a gathering of almost 10,000 trademark professionals from around the world has been an amazing learning opportunity and has me thinking all kinds of interesting thoughts about trademarks.

One session I particularly enjoyed was on the protection of intellectual property of indigenous cultures, or traditional knowledge.  At the broadest level, this is intellectual property that includes (for example) visual art forms, dances, medicines, genetic matter, and stories from indigenous cultures around the world.  Perhaps the greatest challenge is that this property does not belong to a single author, and instead encompasses very old knowledge from a community.  In that sense, it runs counter to our traditional intellectual property laws which protect authors and owners in a much more narrow sense.  Traditional knowledge thus requires its own unique protection.  This is complicated by the fact that protection of such rights needs to be considered not just on national levels for the countries where these groups reside, but on a far more global level, as we learn to treat such property in a far more respectful way.

Due to New Zealand's unique relationship to the Maori people, New Zealand's Intellectual Property Office includes Maori consideration of trademark applications and requires that trademarks registered in New Zealand not be culturally offensive or exploitative to the Maori people.

Protection efforts are also under way internationally.  The World Intellectual Property Office (WIPO) has its IGC committee researching matters related to the protection of traditional knowledge in an effort to begin to create a framework of protection for this intellectual property that is truly sui generis.  Although their progress is moving at a glacial pace, it is encouraging.  In Africa, member states of the African Regional Property Office (ARIPO) have created the protocol on the Protection of Traditional Knowledge and Expressions of Folklore, to provide a framework for regional protection of traditional knowledge of Africa's many indigenous cultures.

While these issues may not affect many of us on a daily basis, I think it should inform IP professionals.  We have a responsibility to be respectful of traditional knowledge and to help our clients do the same.