Law exam 3
Terms of Trademark protection
Usually lasts 10 years, can be renewed indefinitely on payment of additional fees.
What provides the legal ground rules for int'l commerce?
WTO agreements
What protection do you get by filing one patent application with PCT?
By filing one int'l patent application with PCT, you can simultaneously seek protection for an invention in 152 countries.
Basic int'l differences in employment law
Discrimination, child labour, employee participation in management decisions, restraints on employee dismissal.
Define Fair Trade
an organized social movement, which promotes equitable standards for int'l labour, environmentalism, and social policy can range from handcrafts to agricultural commodities.
What annexes does GATT have?
annexes dealing with specific sectors such as agriculture and textiles, and specific issues such as state trading, product standards, subsidies and actions taken against dumping.
Another name for Most-Favoured-Nation treatment
normal trade relations
Article 23
prevents the use of a geographical indication for wine/spirits not produced in the place indicated, EVEN if the GI is accompanied by "imitation, like, style" etc words.
Lisbon Agreement
offers protection for an appellation of origin in the contracting parties thru a single registration. Appellation of origin: names of the places of origin
Benelux office for intellectual property
offers trademark protection in the Benelux territory (Belgium, Luxembourg, Netherlands)
What was the problem with patent applications that the Paris convention helped?
patent applications had to be made roughly at the same time in all countries in order to avoid a publication in one country destroying the novelty of the invention in the other countries.
Intellectual property
patents, trademarks, copyright, trade secrets
Protection for a registered geographical indication
will remain valid unless cancelled.
2 categories of intellectual property
industrial property and artistic property
What is the most favoured nation treatment?
it is a method of establishing equality of trading opportunity among states, by making originally bilateral agreements multilateral. (guarantees trading opportunity equal to that of the most-favoured nation)
Most-Favoured-Nation treatment as an instrument of economic policy
it provides a treaty basis for competitive international transactions
examples of schedules from the uruguay round?
lower customs duty rates, services market-opening
Precursor organization to GATT
International trade Organization (ITO), was first proposed in 1947 during the UN conference on trade and employment
Industrial property
Patents and Trademarks
Generic terms/GI define
Generic terms: names which have become the term customary for a product, that were once GIs.
Principle of automatic protection
Such protection must not be conditional upon compliance with any formality
Who renews the GSP?
Congress
Supreme court and extraterritoriality
"presumption against extraterritoriality" -supreme court recognizes that congress has the power to extend application of its laws beyond US territory, but the presumption is that US laws were only meant to be applied within the US -The presumption is to defer to foreign law in order to avoid int'l discord.
GATT: Article 1. General Most-Favored-Nation Treatment
*With respect to customs/duties/other charges associated with imports&exports, and all rules and formalities in connection with import/export: any advantage, favor, privilege, opportunity granted by any contracting party to any product originating in or destined for any other country shall be accorded immediately and unconditionally to the like product originating in or destined for the territories of all other contracting parties.
The Doha Round (doha development agenda)
- the latest round of trade negotiations among WTO membership. -the work program covers about 20 areas of trade -Fundamental objective: to improve the trading prospects of developing countries. -approved a decision on how to address the problems developing countries face in implementing the current WTO agreements.
2 exceptions to extraterritoriality presumption Courts have struck a balance between:
-Clear congressional intent -Direct effect within the US -these exceptions require courts to determine whether extraterritoriality is appropriate. **between: showing respect for international law and recognizing that the Constitution is subordinate to no other law.
European Union Trade Mark (EUTM)
-Formerly "Community Mark" -registration with, protects a trademark in all the member states of the EU
Int'l agreements which provide elements of protection for GIs:
-Madrid -Lisbon -GATT -TRIPS -Paris Convention.
Madrid agreement and Madrid protocol
-Make it possible to file an application for an INTERNATIONAL REGISTRATION, which will offer TRADEMARK protection in any of the countries the applicant designates that are party to one or the other treaties. Protocol: Makes the Madrid system more flexible and more compatible with the domestic legislation of certain countries or intergovernmental organizations that had not been able to accede to the agreement. **The US is a member of the system and protocol.
Berne Convention for the protection of literary and artistic works
-September 9, 1886 -is the oldest int'l treaty in the field of copyright. -is open to all states -Came about because of the need for a uniform system
Extraterritoriality
-US laws can be extended outside the territory of the US when there is a connection to the US justifying extraterritorial application.
"reasonable efforts to maintain secrecy" trade secret criterion
-a court will not protect secrets unless the owner makes reasonable efforts to do so. -Courts will consider: value of info protection resources how broadly info is known inside and out
ASCM (Subsidies)
-adopted during the uruguay round -disciplines the use of subsidies -deals with the measures which countries can take to counter the effect of subsidies (countervailing measures)
Trademark Law Treaty (TLT)
-aims to standardize and streamline national and regional trademark registration procedures. -makes trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable. **54 contracting states, including the US.
how do some economists and conservative think-tanks see fair trade?
-as a type of subsidy that impedes growth.
When can a compulsory license be issued?
-attempts to negotiate a voluntary license with the patent holder have failed -the right holder shall be paid adequate renumeration, taking economic value into account (does not define adequate renumeration or economic value). -there does NOT need to be an emergency
Madrid system
-made up of the madrid agreement and madrid provision. Agreement: nationals of any signatory may secure protection of their trademark, registered in the country of origin, in all other states that are party to the Agreement. Protocol: nationals of any signatory may secure protection in countries and jurisdictions that are contracting parties to the Protocol based on a pending application or registration in the country or jurisdiction of origin.
TRIPS agreement
-the most comprehensive multilateral agreement on intellectual property -came into effect on 1 January 1995 Goals: -the reduction of distortions and impediments to international trade -promotion of effective and adequate protection of intellectual property rights -ensuring that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.
How are GIs like trademarks? (valuable in the same way)
-they are source identifiers -guarantees of quality -valuable business interests
define "originate" in terms of NAFTA
1) Goods wholly obtained or produced entirely in the NAFTA region (contain no foreign inputs) 2) Goods produced entirely in the NAFTA region, exclusively from originating materials (contain foreign materials that have been previously manufactured into originating materials) 3) Goods meeting an annex 401 specific rule of origin (ex. prescribed change in tariff classification, regional value content requirement) 4) Unassembled goods, and goods classified with their parts, which do not meet the tariff-shift rule but contain 60% regional value content using the transaction-value method, or 50% using the net-cost method
The three basic principles of the Berne Convention
1) Principle of "National Treatment" 2) Principle of Automatic Protection' 3) Principle of the independence of protection
Why are GIs good??
1) an efficient means of organizing regions in the global market 2) GIs help increase the overall value of products 3) allow for more equitable dist. of wealth btwn producers & distributions 4) provide incentive to produce higher quality products
GSP: conditions under which merchandise will be entitled to duty-free treatment
1) the merchandise must be the "product of" a beneficiary country. -the goods are wholly the growth, product, or manufacture of a beneficiary country or -imported materials are substantially transformed into a new or different article of commerce in a beneficiary country. 2)the merchandise must be imported directly from beneficiary country to US. 3) the cost or value of materials produced in the beneficiary developing country, or the direct cost of processing performed there, must be at least 35% of the appraised value of the goods.
Strategic intent of fairtrade
1) to work with marginalized producers and workers in order to help them move from a position of vulnerability to security and economic self-sufficiency. 2)to empower producers/workers to become stakeholders in their own organizations and actively play a wider role in the global arena to achieve greater equity in int'l trade.
Article 22, geographical indications
1. Geographical indications are indications which identify a good as originating in the territory of a member, where a given quality, reputation, or other characteristic of that good is essentially attributable to its geographical origin.
How many members does GATT have?
164 members since 29 july 2016
***How many contracting member countries in the paris convention?
177, making it one of the most widely adopted treaties worldwide.
When was the paris convention approved and signed? when did it come into effect? initial number of member countries by 1884 Has the paris agreement been revised since?
1883 at a diplomatic conference. came into effect in 1884. 14 yes, from time to time
GSP: Generalized System of Preferences
A preferential program that provides duty-free treatment to products of beneficiary designated countries and territories. -Authorized by the Trade Act of 1974 as a means of promoting economic development in the developing countries -instituted in 1976
Define Trademark
A trademark is a distinctive mark, motto, device, or implement that a manufacturer affixes to the goods it produces so that they can be identified on the market and their origin made known. -A trademark is a source indicator.
examples of where extraterritorial application has been allowed through the effects doctrine.
Antitrust law: In order to establish jurisdiction in an antitrust case, there must be a direct and substantial effect on commerce in the United States. Environmental law: In Environmental Defense Fund, Inc. v. Massey, the D.C. Circuit extended U.S. environmental laws abroad where the regulated conduct would "result in adverse effects within the United States."
Define Trade secret
Any information, including any formula, pattern, compilation etc, that 1) provides a business with a competitive advantage 2) is not generally known by a company's current or potential competitors and cannot readily be discovered by them through legitimate means 3) is the subject of reasonable efforts to maintain its secrecy
Who can file an int'l patent application?
Anyone who is a national or resident of a PCT contracting state. -It may generally be filed with the national patent office of the Contracting state of which the applicant is a national or resident or, at the applicant's option, with the int'l bureau of WIPO in Geneva.
Article 22
Article 22 says that you cannot present a good in a manner that suggests it originates anywhere else than where it really did. stops the designation or presentation of a good in a manner that suggests it originates in a geographical area other than the true place of origin.
What does the PCT do?
Assists applicants in seeking patent protection internationally for their inventions, helps patent offices with their patent-granting decisions, and facilitates public access to a wealth of technical info relating to those inventions.
When was the Doha round officially launched?
At the WTO's Fourth ministerial conference in Doha, Quatar, in 2001.
Why is the doha round known as the doha development agenda?
Because its fundamental objective is to improve the trading prospects of developing countries.
Which states signed the paris convention initially? Who were the latecomers that signed by 1884 when it came into effect?
Belgium, Brazil, El Salvador, France, Guatemala, Italy, Netherlands, portugal, serbia, spain, switzerland Late comers: GB, Tunisia, Equador
Patent
Can be filed for a NEW and USEFUL process, machine, manufacture, or composition of matter; or any new and useful improvement thereof.
The TRIPS Agreement and the Doha Declaration provide flexibility for countries to grant compulsory licenses to patents under certain conditions:
Compulsory licensing and government use without the authorization of the right holder are allowed, but are made subject to conditions aimed at protecting the legitimate interests of the right holder. (Article 31)
Artistic property
Copyright (books, music, films, computer software)
Dumping: GATT / Article VI (definition)
Dumping: When a company exports a product at a price lower than its normal value (the price that the product is sold in their domestic market). generally regarded to be an unfair business practice.
EMPLOYMENT LAW STOP HERE
EMPLOYMENT LAW STOP HERE
Who denounced the paris agreement to join again in the 1990s? When did the paris convention increase its membership significantly?
El Salvador, guatemala, Ecuador. -the first quarter of the 20th century and after WW2
Employment law in England, France, EU, Saudi Arabia
England: prohibits discrimination in employment based on sex (including pregnancy), *race, or trade union membership. France: prohibits discrimination based on sex, marital status, national origin, race, or religion. EU: requires "equality between men and women with regard to labor market opportunities and treatment at work." Saudi: specifically prohibits commingling of men and women in the workplace.
***African intellectual property organization and African regional intellectual property organization.
Filing with one or the other protects a trademark in all the member states of the respective organizations.
When can a compulsory licence be issued without first trying for a voluntary license?
For "national emergencies", "other circumstances of extreme urgency", "public non-commercial use" (or "government use") or anti-competitive practices
National treatment Clause of TRIPS
Forbids discrimination between a member's own nationals and the nationals of other members.
Copyright
Form of protection provided to the authors of "original works of authorship" of intellectual works, both published and unpublished.
What was GATT before 1995?
From 1947-1994, GATT was the forum for negotiating lower customs duty rates and other trade barriers
GATT
GATT was designed to provide an int'l forum that encouraged free trade between member states by regulating and reducing tariffs on traded goods and by providing a common mechanism for resolving trade disputes. -member nations meet every 2 years to negotiate new tariff agreements
Major trade Agreements
GATT: General agreement on tariffs and trade -for goods GATS: General agreement on Trade in Services TRIP: Trade-related aspects of intellectual property rights
Differentiate between a GI and a trademark.
GI: -identify a good as originating from a certain place -name is usually predetermined by geographical area -may only be used by anyone in the area of origin who produces goods to standard. Trademark: -identifies a good/service as originating from a certain company -can be any arbitrary sign/word -can be licensed to anyone, all over the world.
When was GATT first signed and what does it stand for? Why was it created?
General Agreement on Tariffs and Trade was signed in 1947. GATT was originally created by the Bretton Woods (new hampshire) conference as part of a larger plan for economic recovery after WW2.
WIPO HQ
In Geneva, Switzerland.
effects doctrine
In the absence of clear congressional intent, courts have authorized extraterritorial application where certain conduct abroad has a direct effect within the United States
***Which int'l agreements make it possible to file a single application to register a trademark in more than one country?
Madrid agreement, Madrid protocol, African intellectual property organization, African regional intellectual property organization.
Patent Cooperation Treaty (PCT)
Makes it possible to seek patent protection for an invention simultaneously in each contracting state by filing an "int'l" patent application
Negatives of protection of intellectual property
May restrict access to necessary protected property. EG the inability to produce needed pharmaceutical drugs at prices necessary to meet needs in economically depressed societies
2 criteria to file a patent
NEW and USEFUL
Are these major trade agreements static?
NO. they can be renegotiated from time to time and new agreements can be added to the package. -Many are now being negotiated under the Doha development agenda (launched by WTO trade ministers in DOHA, Quatar, in 2001)
GATS
New General Agreement on Trade in Services -has to do with rules dealing with services. -banks, insurance firms, telecommunications companies, hotel chains, transport companies.
Title one of ADA
No employer shall discriminate against a qualified individual with a disability in regard to job application procedures, the hiring, advancement, or discharge of employees, employee compensation, job training, and other terms, conditions, and privileges of employment.
***Singapore treaty on the Law of Trademarks: Objective
Objective: to create a modern and dynamic int'l framework for the harmonization of administrative trademark registration procedures.
This int'l agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries:
Paris Convention Article 1 (2)
Paris convention applies to...
Paris convention applies to the Member States of WIPO, and to nationals of the Member States of WIPO
Title V11 of the civil rights act of 1964
Purpose: to eliminate discrimination in employment based on race, colour, religion, sex, or national origin
three main features of the TRIPS agreement
Standards Enforcement Dispute Settlement
Principle of the independence of protection
Such protection is independent of the existence of protection in the country of origin of the work. If, however, a contracting State provides for a longer term than the minimum prescribed by the Convention and the work ceases to be protected in the country of origin, protection may be denied once protection in the country of origin ceases.
How strict is TRIPS?
TRIPS agreement is a minimum standards agreement: members can provide more extensive protection of intellectual property if they choose. -Members can determine the appropriate method of implementing the provisions of the agreement within their own legal system and practice.
***Taiwan and the paris convention
Taiwan is NOT a party to the paris convention, however, according to article 27 of its Patent Act, Taiwan recognizes priority claims from contracting members.
Who are the founding members of the WTO?
The 75 existing GATT members and the european communities in 1995. -the other 52 GATT members rejoined the WTO in the following 2 years (the last being Congo in 1997).
Does the GSP last forever?
The GSP periodically expires and must be renewed by congress to remain in effect
EEOC
created by 1964 civil rights act, charged with enforcement of title VII.
relationship between ITO and GATT
The negotiating countries for ITO began parallel negotiations for GATT as a way to introduce early tariff cuts. -Once ITO failed to be implemented by the US, GATT was the only organization left.
Article III: national treatment on internal taxation and regulation
The products of the territory of any contracting party imported into the territory of another contracting party, shall be treated no less favourably than like products of national origin, in respect of all laws, regulations, and requirements affecting their internal sale.
Since 1995, GATT is what?
The updated GATT is the WTOs umbrella agreement for trade in goods.
Examples of registered GIs:
Toscano olive oil from tuscany, Roquefort cheese, Darjeeling tea, Irish whiskey, Idaho potatoes.
What will not invoke preferential NAFTA duty rates?
Transhipping goods thru Mexico or Canada that were made in another country, or performing only minor processing or packaging operations on them in North America.
Who administers the Madrid agreement and protocol?
WIPO
What are WTO agreements? what is the goal of WTO agreements? What is the system's overriding purpose?
WTO agreements are essentially contracts, binding govt's to keep their trade policies within agreed limits. GOAL: to help producers of goods and services, exporters, and importers conduct their business, while allowing gov'ts to meet social and environmental objectives. The overriding purpose is to help trade flow as freely as possible.
What commitments did WTO members make under GATS?
WTO members made individual commitments under GATS stating which of their services sectors they are willing to open to foreign competition, and how open those markets are. (Term-174)
Bretton woods conference -What agreements were signed?
Was held from July 1 to July 22 1944. -International Bank for Reconstruction and Development -General Agreement on Tariffs and Trade (GATT) -International Monetary Fund (IMF).
Compulsory Licensing
When a gov't allows someone else to produce the patented product or process without the consent of the patent owner.
Principle of national treatment, Berne Convention
Works originating in one of the contracting States (that is, works the author of which is a national of such a State or works which were first published in such a State) must be given the same protection in each of the other contracting States as the latter grants to the works of its own nationals
Do title VII, ADA, and ADEA have extraterritorial application?
YES -apply to foreign employers controlled by US business entities. -covers US employer that control a corporation incorporated in a foreign country
what are geographical indications typically used for?
agricultural products, foodstuffs, wine and spirit drinks, handicrafts, and industrial products.
National Treatment
each country party to the Paris Convention must grant the same protection to nationals of the other member countries as it grants to its own nationals.
***The Right of Priority
applicant who filed for an industrial property right in one of the member countries may, within a specified period of time (six or 12 months), apply for protection in all the other member countries. These applications will be regarded as if they had been filed on the same day as the earliest application.
How is the ADEA applied abroad?
applies only to U.S. citizens working abroad for companies controlled by U.S. employers. U.S. citizens working abroad for companies not controlled by U.S. employers are not covered. **the ADEA has also been held to apply to foreign entities operating within the United States.
Most-Favoured-Nation treatment as a principle of public international law
as a principle of public int'l law, it establishes the sovereign equality of states with respect to trading policy.
What do authorities do about dumping?
authorities of the importing country can adopt measures to protect their domestic industry from such unfair competition.
The WTO's intellectual property agreement
basically amounts to rules for the protection of IP in int'l trade and investment in copyrights, patents, trademarks, geographical names used to identify products, industrial designs, integrated circuit layout-designs and undisclosed information such as trade secrets
Civil rights act of 1991
contained an exemption to Title VII and the ADA for local laws in host nations. Found in both VII and ADA: It is not a violation of U.S. law for an employer to engage in conduct that ordinarily would constitute illegal behaviour if such behaviour were required by local law where the conduct took place.
Uruguay round
created new rules for dealing with trade in services, relevant aspects of intellectual property, dispute settlement, and trade policy reviews. -30,000 pages, 30 agreements (called SCHEDULES) in specific areas.
How long does a copyright last?
depends on several factors, such as whether it has been published and the date of publication. General rule: for works created after Jan 1, 1978, copyright protection lasts for the life of the author plus an additional 70 years.
NAFTA
eliminates both tariffs and the merchandise processing fees for goods that "originate" in a member country
As of september 2008, what happens to countries bound by both the madrid agreement and protocol?
for members of both, only the provisions of the protocol apply. The agreement governs only those who are bound solely by the agreement.
Most-favoured-nation treatment clause (TRIPS)
forbids discrimination between the nationals of other members
1976 copyright act
generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, etc etc
When can WTO members impose a countervailing measure (counters the effects of subsidies)
if it is determined that there is: 1) the existence and amount of a countervailing subsidy 2) injury to a domestic industry 3)a causal link between the subsidized imports and the injury.
When does a subsidy exist?
if there is some form of of financial contribution by a govt that confers a benefit. -the financial contribution can be made directly by a govt/ public body, or by the govt thru a private body/other funding mechanism, and can take the form of a direct transfer of funds, revenue that is foregone or not collected, the provision or purchase of goods and services, or any other form of income or price support.
GATT 1994
in 1993 GATT was updated to include new obligations upon its signatories. -Created WTO (world trade organization)
ADEA of 1967
prohibits age discrimination in employment. -prohibits employers from terminating or otherwise adversely affecting terms and conditions of employment for reason of age of individuals who are at least forty years old. The ADEA was patterned after Title VII.
Benefits of intellectual property protection
protection of patents, copyright allows creators time to gain economic returns sufficient to justify investment of R&D funds protection of trademarks provides consumer protection and prevents unfair competition from free riders.
Article 24
provides exceptions to article 23 (wines and spirits)a
Article 8 TRIPS: to do with Principles
recognizes the rights of Members to adopt measures for public health and other public interest reasons and to prevent the abuse of intellectual property rights, provided that such measures are consistent with the provisions of the TRIPS Agreement.
ADA reasonable accomodation
requires an employer to provide reasonable accommodation to qualified individuals with disabilities who are employees or applicants for employment, unless to do so would cause undue hardship.
What is now the WTOs principal rulebook for trade in goods?
rulebook: GATT
Types of info that can be protected as trade secrets
sales and marketing plans customer lists and data software computer files formulas recipes survey results mftg techniques
Article 7 TRIPS: to do with objectives
says that the protection and enforcement of intellectual property rights should contribute to 1) the promotion of technological innovation, and 2) the transfer and dissemination of technology. This should be to the mutual advantage of producers and users of technological knowledge, and done in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
What is the current set of WTO agreements the result of?
the 1986-94 Uruguay round negotiations -included a major revision of the original GATT
What does the WTO deal with/ what is it?
the WTO deals with the rules of trade between nations at a global or near-global level. it is: -an organization for liberalizing trade -a forum for governments to negotiate trade agreements -a place to settle trade disputes.
Berne convention minimum terms of protection
the life of the author plus 50 years.
dispute settlement in WTO
the system encourages countries to settle their differences through consultation. Failing that, they can follow a carefully mapped out, stage-by-stage procedure that includes the possibility of a ruling by a panel of experts, and the chance to appeal the ruling on legal grounds.
WTO: Trade Policy Review Mechanism's purpose
the trade policy review mechanism's purpose is to improve transparency, to create a greater understanding of the policies that countries are adopting, and to assess their impact. Many members also see the reviews as constructive feedback on their policies. **All WTO members must undergo periodic scrutiny, each review containing reports by the country concerned and the WTO secretariat
Improper acquisition examples
theft misrepresentation bribery breach of contract espionage breach of confidentiality
when do the WTO rules support maintaining trade barriers?
to protect consumers, prevent the spread of disease or protect the environment.
"Not generally known or discoverable" trade secret criterion
trade secret protection does not apply to info in the public domain or otherwise generally available to customers or competitors -info disclosed by mistake -info obtained by legitimate reverse engineering
Patent Length: utility and plant patents, and design patents
utility & plant: for applications filed on or after june 8, 1995, patents begin on date of grant and last for 20 years from the application date (subject to payment of fees) design: last 14 years from the date the patent is granted. **patents in force on june 8 1995 automatically have a term that is the greater of the 20 year term described above, or 17 years from the patent grant.
When is a GI considered an appellation of origin?
when both the quality and reputation are due exclusively or essentially to the geographical environment.