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Volume 4 | Number 2

Volume 4 | Number 2 (Spring 2004)

You may download and read the Full Edition, or click on a citation below for the individual articles.

ORIGIN, PROMINENCE, PROFIT, AND CONSUMER CONFUSION: AN ANALYSIS OF THE GLOBAL DEBATE ON GEOGRAPHICAL INDICATION PROTECTION SYSTEMS
Arinolayemi A. Adegbomire and L. Taylor Arnold
4 Wake Forest Intell. Prop. L. J. 68

What began as a quarrel between the European Union and the United States over farmer subsidies is now a global controversy over intellectual property protection systems. A major source of conflict is the interplay between protections for trademarks on one hand and geographical indications on the other. Geographical indications are place-names historically linked to commercial goods. In order to add value to European agricultural products, the European Union is pushing for absolute protection of 41 wines, cheeses, and other products whose names invoke European cities or regions through a multilateral geographical indication registration system. The United States and its supporters challenge the products’ absolute protection. These nations contend that such a registration system is burdensome and prefer registration and preeminence of established trademarks in each individual nation. Through the Doha Development Agenda, the World Trade Organization plans to finalize development of a multilateral trading system by January 1, 2005. If a multilateral registration system is employed, then leaders must determine whose rights take precedence in the event of a conflict between a prior trademark and a later geographical indication. This paper analyzes the global trade debate using the principles of priority, territoriality, and exclusivity, then proposes solutions.

“SUPER-DMCA” STATUTES:
PUTTING HOLLYWOOD IN CHARGE OF INTERNET BUSINESS
Matthew Verga
4 Wake Forest Intell. Prop. L. J. 104

Hollywood has come to town, and they have a part they would like you to play: piracy enforcer. Hollywood, as represented by the Motion Picture Association of America (MPAA), is spearheading a nationwide campaign for new legislation at the state level to create increased protections for content and communication service providers and increased penalties for violators that it has been unable to obtain at the federal level.

Over the past year, activist groups and individuals across the country began organizing to lobby against these state law initiatives, which they have dubbed “super-DMCA” statutes in reference to the federal Digital Millennium Copyright Act. As a result of the new opposition, vehement debate has begun in several states over the proposed changes to the law. The criticisms leveled at the initiatives range from unconstitutionality to intolerable invasions of privacy to irreperable stifling of technological development.

This paper provides an overview of this developing debate. First, this paper examines the provisions of the model statute proposed by the MPAA and the recent revisions that have been made to that model statute. Next, it reviews each state statute that has been passed or proposed based on the MPAA’s model legislation as of late 2003. It then presents the arguments advanced by leading opponents and proponents of the legislation and, finally, concludes that, as written, this legislation should not be enacted.

CURTAILING THE RAMPANT MOVEMENT OF INTANGIBLE PROPERTY OFFSHORE
Lynn Varisano
4 Wake Forest Intell. Prop. L. J. 130

The evolution of the American economy from manufacturing intensive to one based on services, capital and intellectual property has led U.S. companies to transfer intellectual property offshore in an effort to reduce tax. This paper will begin by discussing the rules and regulations related to the transfer of intangible property offshore. Next, it will discuss the tax strategies used by corporations to reduce or eliminate the tax paid on the outbound transfer of intangible property. Then it will discuss alternative course s of action proposed by the U.S. Treasury and various commentators to prevent the offshore movement of intangible property. Finally, my paper will present what I believe is the most effective course of action to reduce this transfer of property, and will describe the possible positive and negative results. I recommend that a formulary apportionment system is more efficient and consistent with a global economy than the system currently in place. The primary issue in determining this solution was whether the existing laws should be modified as they relate to the offshore movement of intangible property or whether the U.S. should change the foundation upon which its international tax system is based upon.

THE EXPANSION OF THE TRADITIONAL GOODWILL TRADEMARK RATIONALE
Christopher J. Laurey and Alice M. Bonnen
4 Wake Forest Intell. Prop. L. J. 157

Trademark protection has traditionally sought to prevent consumer confusion and protect producer goodwill. With the significant expansion of companies’ business first from a regional to a national market, and then from a national to an international market, additional legal protections have been desirable. The Lanham Act of 1946 sought to support this first transition by providing federal registration to create national constructive notice. With the second expansion of trademark protection to the international arena, the 1988 Amendment to the Lanham Act attempted to decrease marketing costs involved in developing a mark and level the playing field for U.S. companies who were at a competitive disadvantage with foreign businesses operating under more producer-friendly trademark laws. Due to the addition of the 1988 “intent-to-use” amendment, the goodwill rational for creating trademark rights has expanded to recognize a producer’s limited property interest in a mark. However, significant economic uncertainty remains in the trademark application process for the “intent-to-use” applicant. Furthermore, companies’ competitive disadvantage with foreign firms will only increase with the expansion of globalization. A number of remedies have been proposed to help the Lanham Act better protect and promote trademark intellectual property. A way to persuade lawmakers to afford “intent-to-use” applicants a judicially enforceable remedy against common law users is to convince them that trademarks have come to represent a valuable property interest to producers, above and beyond the traditional goodwill rationale.