Irene Calboli

Of Markets, Culture, and Terroir: The Unique Economic and Culture-Related Benefits of Geographical Indications of Origin

In this Chapter, I highlight the economic and cultural benefits that derive from GI protection and consider whether expanding GI protection beyond the current international standards could be desirable for WTO/TRIPs Members. I also address the theoretical challenges that the protection of GIs creates for the traditional intellectual property system, and analyze the arguments against GI protection that have been raised by GI opponents. Ultimately, I conclude that both under a traditional economic approach as well as under a cultural analysis approach, granting GIs protection, including enhanced anti-usurpation protection, may produce benefits that can outweigh the costs of such protection. Generally, my observations refer primarily to GIs that identify products that are originating entirely, or almost entirely, from the territory in question either because these products are grown in, or are made with ingredients coming from the territory, or because they are manufactured therein. In this respect, I also note that TRIPs’ definition of GIs accepts that GIs can identify products that are only “essentially,” and not necessarily “exclusively,” grown or made in the GI-denominated terroir. Yet, in this Chapter I advocate for interpreting the wording “essentially” strictly, namely as “almost exclusively” or “mostly exclusively,” as the use of GIs on products with a looser territorial linkage raises serious doubts, in my opinion, as to the legitimacy of GI protection.

Rethinking the Work of Geographical Indications in Asia: Addressing Hidden Geographies of Gendered Labor

Geographical Indications (GIs) were established as a distinctive category of intellectual property (IP) in the 1994 Trade-Related Aspects of Intellectual Property (TRIPS) Agreement. Reflecting this broad field of legal vehicles, marks indicating conditions of origin (MICOs) denote indications of source, appellations of origin, denominations of origin, and collective trademarks and certification marks. This chapter recognizes the limitations of GIs, examining a need for greater empirical study of the regulations governing their use. Most academic scholarship fails to investigate the social relations between labourers, landowners, producers, and GI institutions, or political movements for decolonization. This chapter, therefore, suggests that local GI governance must be analyzed within a broader scope that encompasses class, ethnicity, and gender. We begin by exploring Darjeeling Tea as a famous form of national GI in India that reflects some of the ideological tendencies of MICO systems. We then demonstrate the global significance of MICO governance by providing insight into contemporary political ecology in Southeast Asia. By examining palm oil expansion, the decline in swidden agriculture, and subsequent environmental and cultural effects, we outline a crisis of biocultural diversity in the region. Lastly, this chapter inquires into the future of MICOs, looking specifically at emerging practices that might encourage alternative value systems to address both environmental and social justice concerns, including greater gender equity. Ultimately, this chapter illustrates how current uses of MICOs uphold entrenched social hierarchies and therefore must be reoriented towards rights-based development and social justice objectives.

The Potentials, and Current Challenges, of Protecting Geographical Indications in Sri Lanka

In a country like Sri Lanka, the importance of obtaining protection for unique products can hardly be overstated. Sri Lanka is a small nation, both in size and in production capacity. Still, Sri Lanka is known globally for its tea, in particular, Ceylon Tea. Although China and Kenya produce more tea than Sri Lanka, Sri Lanka remains one of the largest global exporters of tea. This has been achieved partly due to the fact that the name of its famous tea, Ceylon Tea, is protected as a registered certification mark and under the regime for the protection of geographical indications (GIs), as is the logo identifying the “Ceylon Tea.” Sri Lanka is also famous for its “true cinnamon,” the Ceylon Cinnamon, which is also widely exported, and which also enjoys protection as a certification mark and under the current GI regime. But what if Sri Lanka could make better use of its existing protection for geographical names and protect additional products coming from specific geographical areas in the country? For example, Sri Lanka is famous for Ceylon Sapphires, Dumbara Mats, and Beeralu Lace – just to name a few products. Yet, the producers of these products have not been successful at

Introduction: Recognizing Diversity in Intellectual Property

Diversity is arguably one of the most prominent features of globalization. Indeed, the integration of markets and the changes brought by the large-scale diffusion of information and communication technologies have brought the debate on diversity to the forefront. As diversity has permeated into a more prominent social phenomenon, awareness of the diverse segments of society – based on different races, genders, religions, nationalities, and much more – and the profound socioeconomic impact of diversity has grown. In several parts of the world, diversity is portrayed by politicians and legislators as a powerful hallmark of political, economic, and social integration. “Unity in diversity” and “racial harmony” are examples of slogans that positively portrays diversity and highlight the importance of diversity in a multi-cultural society. Despite the rise of diversity to an internationally relevant topic of attention, however, one cannot ignore that a disturbing trend of denial of resources continues to be commonplace with respect to minorities and certain marginalized groups. In particular, racial, gender, and religious-based minorities or groups of people from specifi c countries or regions of the world continue to have limited access to resources, opportunities, or simply knowledge and information. This lack of true inclusiveness manifests itself primarily as differences in entitlements, which

Reading the Tea Leaves in Singapore: Who Will Be Left Holding the Bag for Secondary Trademark Infringement on the Internet?

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.1 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.2 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 “a sign” on commercial documents or in advertising, provided that they “do[] not know nor ha[ve] reason to believe” that the owner of the mark or his licensee has not consented to such use.3 Although the

Kernochan Center for Law, Media and the Arts Panel Transcript: Who’s Left Holding the [Brand Name] Bag? Secondary Liability for Trademark Infringement on the Internet

JANE GINSBURG: This is our last panel, and the object is to bring a number of experts, including practitioners and academics, from the United States and from abroad, to react to the two proposals that we just heard. Each of the panelists will give initial comments, and then we are going to go around the table again so that our panelists can react to one another’s comments. We will go in the following order: First, Amy Cotton from the Patent and Trademark Office. She’s our government representative. I’m not sure if you’re speaking with your government hat or disclaiming— AMY COTTON: Disclaiming. JANE GINSBURG: Disclaiming—but she’s still from the government. Next, Bob Weigel, at the far end, who is with Gibson Dunn and represented Gucci in the Gucci v. Frontline case.1 Bob will be speaking, I suspect, from the brand owner point of view. BOB WEIGEL: That’s a fair bet. JANE GINSBURG: Next, Bruce Rich from Weil Gotshal, who happens to have been the successful counsel in the eBay case.2 I think you’ll be standing in for the service providers. And then, crossing a couple of oceans—one ocean first: Miquel Peguera, from the Open University of Catalonia, who is a leading expert on the liability or nonliability of service providers. He has, among other things, published an important article in the Columbia Journal of Law & the Arts,3 which will be publishing the proceedings of this symposium a couple of months hence. And then, from across yet another ocean—Irene Calboli, who is currently visiting at the National University of Singapore and who will be talking about the effect of the free trade agreements and the potential trans-Pacific partnership on questions of secondary liability for service providers. AMY COTTON: Thank you, Jane. I’m wearing my invisible government hat, so watch out.

An American Tale: The Unclear Territorial Application of the First Sale Rule in United States Copyright Law (and Its Impact on International Trade)

This Chapter addresses a hotly debated topic in copyright law in the United States: the intricate relationship among Sections 106, 109(a), and 602(a)(1) of the Copyright Act and the impact of the decisions of the Supreme Court in Quality King and Costco on the application of the first sale rule with respect to gray market products and international trade. The Chapter proceeds as follows. Part II describes the scope of copyright protection and the copyright first sale rule in the United States. In particular, Part II outlines the provisions of Sections 106, 109(a), and 602(a)(1) of the Copyright Act, and addresses the controversy surrounding the interpretation of, and the interplay among these provisions. Part III recounts the Supreme Court’s attempts to resolve the conflicting judicial interpretation in this area first in Quality King v. L’anza in 1998 and later in Costco v. Omega in 2010. Notably, Part III highlights the Supreme Court’s failure to clarify the territorial application of Section 109(a) of the Copyright Act and the continuing uncertainty that surrounds the first sale rule in copyright law in the United States. Part IV concludes the Chapter and surveys an even more problematic decision that has been issued by the Second Circuit in John Wiley & Sons v. Kirtsaeng in 2011, after the Supreme Court’s decision in Costco. Ultimately, Part IV underscores the urgent need for the Supreme Court or Congress to resolve the ambiguity that continues to dominate the relationship between copyright protection, the first sale rule, and international trade in the United States.

The Role of Comparative Legal Analysis in Intellectual Property Law: From Good to Great?

In this work, I analyze the role of comparative law and comparative legal analysis in the area of intellectual property law. Because the protection of intellectual property rights is inextricably connected to international trade, intellectual property law is one of the most internationally and regionally harmonized fields of law, and has been so since the late nineteenth century. Comparative legal analysis has undoubtedly played an important role in this process of harmonization. Intellectual property scholars have traditionally engaged in comparative legal analysis in the areas related to intellectual property law across a variety of jurisdictions. Throughout their comparative scholarship, intellectual property scholars have facilitated the process of international and regional harmonization by clarifying the respective status of national laws, and at times by criticizing the desirability of the proposed international standards. Scholars have additionally engaged in comparative legal analysis to assess the consequences of the adoption of international standards into national laws. Still, despite the existing considerable tomes of comparative legal scholarship, the perceived importance attributed to comparative legal analysis seems to vary among legal scholars also in the area of intellectual property law similar to mainstream comparative law. This may be attributable to cultural or institutional differences among scholars in different countries. My analysis proceeds as follows. In Part II, I provide a general overview of comparative law and of the methodology (or rather the controversy surrounding the methodologies) of comparative legal analysis. Such an overview is in order, as comparative law has traditionally been an area of controversy where debates range from the very recognition of comparative law as an independent legal discipline to the type of methodology that comparative legal analysis should follow. Based upon this premise, I elaborate, in Part III, on the current role of comparative legal analysis in the specific area of intellectual property law. Due to the limited scope of this work, my analysis is not exhaustive. Notably, I emphasize that comparative legal analysis seems to be already a largely used research technique by scholars in this field consistent with the long tradition of international harmonization of intellectual property law. I note, however, that variation exists among intellectual property law scholars with respect to the importance of the role of comparative law and comparative legal analysis. More generally, I highlight the challenges that intellectual property law scholars face while conducting comparative legal analysis. These obstacles are the same obstacles that typically face comparative scholars in any field of legal study, and range from different theoretical frameworks to language barriers, cultural differences, and different national interests. Despite these recognized differences, I argue, such obstacles should not diminish the general benefits that comparative legal analysis can bring to the advancement of the study of intellectual property law (or any field of law) in every country.

Exhausting Intellectual Property Rights: A Comparative Law and Policy Analysis

Even as globalization seems to be in retreat in political circles, the march of commercialization and markets continues. Government policies, whether tariffs, exits, or walls, cannot impede the competitive drive to meet consumer demand for products and services, whether within national boundaries or across them. In the sphere of intellectual property rights, the doctrine of exhaustion serves to limit the rights of intellectual property owners after a specific exercise of some or all of the rights. This volume provides an assessment of the successes and failures of the exhaustion doctrine as it has been applied through recent judicial decisions in the United States and the European Union. Irene Calboli and Shubha Ghosh explore how evolving interpretations of the exhaustion doctrine affects the large trade in gray market products and other international trade issues. A comparative approach to exhaustion, Exhausting Intellectual Property Rights offers a unique discussion of the often overlooked issue of overlapping rights.