Unitorrial marks and the global economy
| Autor | Doris Long |
| Páginas | 231-257 |
231
“UNITORRIAL” MARKS AND THE GLOBAL ECONOMY
MARCAS
“Unitorrial” marks and the global economy*
DORIS ESTELLE LONG**
In the early days of my law practice, I occasionally was required to consider
whether an advertised brand of a product such as milk that commanded a
higher retail price than an unadvertised brand of the identical product was a
good of “like grade and quality (...)”. A straightforward application of Juliet’s
observations about roses provides us with an easy answer, but I often wondered
whether trademark lawyers or economists might have a different view.
Justice John Paul Stevens1
Summary: I. The evolving nature of “propertized” trademarks. II. Nineteenth century universality. III. The
rise of territoriality. IV. “Territoriality” re-examined. A. Territorial registration. B. Territorial
enforcement. C. Territorial goodwill. V. Universality reconsidered. VI. “Unitorrial” marks. VII.
Conclusion.
The early decades of the twenty-first century may well become known in the annals
of Intellectual Property development as the period when “everything old is new again2”.
Despite the advances in technology and global trade3, legal protection seems to be moving
* Originalmente publicado en el John Marshall Review Intellectual Property L.191. Este artículo se reproduce
con expresa autorización de la autora.
** The author would like to thank Justice Stevens for the inspiration for this article. His comments about
Banbury Tarts in Chicago led me to wonder whether those early English bakers would have had a cause
of action against the “colonialists” usurpation of their renowned source designator. I would also like to
thank Karen Long, Ted Field, Karl Maersch, and Brian McGraw who assisted in some of the research
supporting this article.
1 Justice John Paul Stevens, Section 43A of the Shakespeare Cannon of Statutory Construction: The Beverly
W. Pattishall Inaugural Lecture in Trademark Law, 1 J. MARSHALL REV. INTELL. PROP. L. 179, 188-
89 (2002).
2 An age-old cliché that continues to have relevance in the Global Digital Age.
3 See generally Doris Estelle Long, Globalization”: A Future Trend or a Satisfying Mirage?, J. COPYRIG-
HT SOC’Y (2002) (forthcoming) (discussing the economic and technological trends that underlie current
economic globalization); DAVID HELD & ANTHONY MCGREW, ET AL., GLOBAL TRANSFORMA-
TIONS: POLITICS, ECONOMICS AND CULTURE 29 (1999) (discussing the various political, economic
and financial developments that underlie and represent present globalization); JAMES H. MITTELMAN,
THE GLOBALIZATION SYNDROME: TRANSFORMATION AND RESISTANCE (2000) (discussing
various economic and political developments that underlie present globalization). For a popular press
exploration of economic globalization, including its technological changes, see THOMAS L. FRIEDMAN,
Anuario Andino de Derechos Intelectuales.
Año VI - N.º 6. Lima, 2010
232
ANUARIO ANDINO DE DERECHOS INTELECTUALES
MARCAS
backwards. Piracy is as much as global trade issue as it was in the 1800’s when foreign
authors, desperate to protect their works from international piracy convened the first in-
ternational conference in copyright protection4. Scholars and judges have questioned the
desirability of copyright protection with as much vigor as Lord Thomas Macaulay when he
railed against the “evils” of copyright protection in his famous speech before the House of
Lords in 18415. U.S. courts appear to have resurrected the discredited doctrine of election
in an effort to restrict the protections available for multi-use Intellectual Property6.
There is one ancient doctrine; however, that has not yet enjoyed a similar renaissance,
despite its clear application to today’s new, global, digital economy. It is the old (and
currently discredited) view that trademarks and other commercial symbols7 are universal
in nature. First given credence in early U.S. cases regarding the importation of grey mar-
ket8, or parallel imports9, the doctrine of universality was gradually replaced by a view of
trademarks as creatures of nation states —pure territorial objects—. Such limited view
served trade protectionist goals which have been rejected in today’s global environment of
comparative free trade10. I do not mean to suggest that commercial symbols such as Coca-
Cola®, CNN®, MTV® or Mickey Mouse® are “universal” in the incompletely reasoned
LEXUS AND THE OLIVE TREE 29 (1st Anchor Books ed. 2000) (discussing the economic, political
and technological changes represented by current globalization).
4 This international conference eventually led to the establishment of the Berne Convention for the Pro-
tection of Literary Works, Sept. 9, 1886, as revised, July 14, 1967, 828 U.N.T.S. 221 [hereinafter Berne
Convention]. See generally SAM RICKETSON, THE BERNE CONVENTION FOR THE PROTECTION
OF LITERARY AND ARTISTIC WORKS: 1886–1986, at 46 (1987) (discussing the history of the Berne
Convention including the early concerns of authors over lack of international protection for their works).
5 Thomas Macaulay, The First Speech on Copyright (Feb. 5, 1841), in MACAULAY’S SPEECHES ON
COPYRIGHT AND LINCOLN’S ADDRESS AT THE COOPER UNION 18, 23 (Charles Robert Gaston
ed. 1914) (describing copyright as an “evil that ought not to last a day longer than is necessary for the
purpose of securing the good” which he defined as a “supply of good books”).
6 See, e.g., Doris Estelle Long, Firs Let’s Kill All the Intellectual Property Lawyers!: Musingsonthe Decline
and Fall of the Intellectual Property Empire, 34 J. MARSHALL L. REV. 851, 881 (2001) (discussing the
apparent resurrection of the doctrine of election and the potential harmful results on Intellectual Property
owners and users).
7 I am using the term “trademarks” in its broad, non-technical sense to refer to any term, phrase, device,
symbol, logo or sign that serves to distinguish one undertaking’s goods and/or services from those of another.
See generally 15 U.S.C. § 1127 (2000) (defining a trademark as “any word, name, symbol, or device, or
any combination thereof (…) to identify and distinguish, his or her goods”); Agreement on Trade Related
Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods, Apr. 15, 1994, Art. 15, 33
I.L.M. 81 [hereinafter TRIPS] (defining trademarks as “any sign, or any combination of signs, capable of
distinguishing the goods or services of one undertaking from those of other undertakings”).
8 “Grey market” goods (also referred to as “parallel imports”) are products which are legitimately manufac-
tured in one country, but are being imported into another country without the authorization of the trademark
owner of the country of importation. See, e.g., K Mart Corp. v. Cartier, Inc., 486 U.S. 281, 285 (1988)
(defining a “grey market” good under U.S. law as “a foreign manufactured good, bearing a valid United
States trademark, that is imported without the consent of the United States trademark holder”). They
should be distinguished from “counterfeit goods” which are trademarked goods whose manufacture was
not authorized by law in the country of manufacture.
9 See, e.g, Apollinaris Co. v. Scherer, 27 F. 17, 22 (C.C.S.D.N.Y. 1886) (allowing the importation of grey
market spring water based on the universal nature of trademark rights); see also discussion infra Part II.
10 See discussion infra Part III.
Para continuar leyendo
Solicita tu prueba