THE JOURNAL OF EDUCATION, COMMUNITY, AND VALUES
by Leonard D. DuBoff, © 2007
In a world where Youtube is a creative venue for aspiring television writers, artists, and Second Life is used for post-college job interviews, it is rare, and sometimes undesirable, for a creative person's work to remain local. With the World Wide Web's ubiquity and the removal of other barriers to international commerce, most items find their way into both national and international channels of commerce.
For instance, a graphic designer may be asked to create a logo for a company or institutional website, perhaps according to a contract or as part of a funded grant, or a photographer may be asked to provide an image for a publication that will be distributed throughout the English-speaking world and beyond. Even inventors, such as university faculty who commercialize their work through private or university-private consortia, may find that their inventions are being handled by multinational companies, such as, for example, Price Costco, with retail outlets throughout much of the world.
The fact is that we have become a global economy and this presents both benefits and challenges. It is gratifying to learn that one's creative work is being appreciated by individuals all over the globe, while it is frightening to realize that one's creative rights may be at risk in far-off places. This raises interesting questions for creative people regarding the ability to protect rights in foreign jurisdictions and the necessity to comply with foreign law as well.
It is well known that any original work of authorship, such as the creation of a work of art or the writing of a novel or a textbook will automatically provide the person engaged in this activity with a copyright in and to the work created if it is both original and has some minimal degree of creativity associated with it once the work is put into a tangible form.
This is true under American copyright law, but it may not be true under the copyright law of every country of the world. Fortunately for creative people in the United States, we have become parties to at least three multinational copyright treaties that provide the creative person with the ability to obtain protection in more than 160 countries of the world with minimal effort.
The oldest and most universal copyright treaty is the Berne Convention. It is more than a century old; yet, the United States resisted membership in the Berne Convention until the 1980s. The effective date for the United States implementation of the Berne Convention is March 31, 1989. This is because it was felt that the rights accorded creative people under that treaty were more extensive than American public policy was prepared to permit. This attitude began to change over time, and the political pendulum has swung in the other direction so that the United States not only became a party to the Berne Convention, but enacted the Visual Artist's Rights Act of 1990, which provided creative Americans with rights in their work that had been available only on the European continent.
The Berne Convention has been adopted by 163 countries of the world, and, among other things, relaxes many of the formalities previously required by the American copyright laws. The Berne copyright treaty makes it clear that a creative person need not use the copyright notice on a work in order to enjoy copyright protection for that work. This is, unfortunately, misleading since the rights obtained when one omits the copyright notice from a protected work may be illusory. The U.S. copyright law provides that anyone who relies in good faith on the fact that no notice is used on a copyrighted work may be deemed an "innocent infringer." Innocent infringers may not be held liable for damages and may even be permitted to continue infringing. The law goes on to state that the way to defeat the defense of innocent infringement is to use the copyright notice. It is, therefore, clear that while the notice is not required, it is certainly a good idea to use it.
Most of the provisions of the Berne Convention have been incorporated into the newest multinational treaty affecting copyright – the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), administered by the World Trade Organization (WTO). The moral rights provisions (that is, the creative person's right to preserve the integrity of the work and to require that the work be properly attributed) of the Berne Convention have not been included and there are some additional provisions found in TRIPs. For instance, TRIPs provides that computer programs are protected as literary works and sets forth rules regarding the protectability of databases.
The United States is also a party to the Universal Copyright Convention (UCC) developed by UNESCO, which has about 62 member nations. This treaty also requires the person to comply with the copyright law of the country where the work is created and, in addition, to use the international symbol "©". The UCC also requires disclosure of the year when the work was first published, as that term is defined in the statute. Publication is a technical concept and includes any distribution of copies to the public by any means now known or hereafter developed. Copy is defined as including the original work itself.
The UCC provides the copyright claimant with the ability to obtain reciprocal copyright protection within all other UCC-member nations; provided, however, that the claimant may not obtain any better rights than would be available for individuals under the law of the nation where rights are being claimed. This means that if American rights are greater and more protective than the rights of a country in which a copyright is being enforced under the UCC, then the party desiring to protect those rights will be accorded the same degree of protection given other nationals of the country in which the copyright is to be enforced. An American seeking to enforce a copyright in, for example, France will be entitled to only the rights provided French nationals under the copyright laws of France, even if those rights are less protective than the American copyright law.
The United States is also a party to the Buenos Aires Convention, which provides copyright protection throughout this hemisphere so long as the treaty's requirements are fulfilled. That treaty provides that citizens of members nations, such as the United States, may obtain copyright protection in other member nations by complying with the copyright laws of the copyright claimant's country and, in addition, adding the words "All Right Reserved" in Spanish, Portuguese or English, whichever is the official language of the claimant's country. Since 2000, all Buenos Aires Convention members have been members of the Berne Convention, so this treaty is essentially obsolete.
As can be seen from this discussion, a person who creates copyrightable work in the United States anticipating that it will be used or displayed in other countries should permanently affix a copyright notice to the work.
In addition to creating work that may be protected by copyright, creative people often create works that are intended to identify the source or sponsorship of a product or service. These are commonly referred to as either trademarks or service marks, though the most common term used for both is trademark.
The United States trademark law is known as the Lanham Act, and the law provides that any name, symbol or logo when used in interstate or foreign commerce may be protected under the federal statute. In order for a trademark to be protectable, it must not be generic (i.e., the noun describing the item in question, such as chairs for chairs), and it must not be confusingly similar to the protected mark of another. Under U.S. law, there are 34 international categories for goods and 12 categories for services.
Generally, marks that are protected in one category may be used by another in other categories, so long as there is no likelihood of confusion. This means that, for example, the word Cadillac was permitted to be used to describe automobiles by the General Motors Company and by another independent company for dog food. It also means that the mark Nike had been used by an Oregon shoe manufacturer for running shoes and by the U.S. government for missiles. On September 28, 2006, however, the U.S. Congress passed a new trademark dilution act that prohibits the use of marks similar to famous marks if the use would dilute or undermine the protected mark either by blurring or tarnishing the protected mark – even if the products or services are in different categories and even if there is no likelihood of confusion.
As of the date of this writing, there is no multinational trademark treaty to which the United States is a party regarding trademark enforcement, though TRIPs (discussed above) does require member countries to implement minimum standards for the protection of trademarks.
The United States has become a party to the Madrid Protocol, which enables Americans to register their trademarks in 78 countries throughout the world through the U.S. Patent and Trademark Office. Unfortunately, Canada has not become a party to this treaty, and thus it is still necessary to register a trademark in Canada by working with a Canadian correspondent.
The European economic community has, among other things, created a so-called community mark within the EEC. In order to obtain registration of a community mark, a correspondent in a member nation must assist by applying through a member nation.
Moving in the other direction, every state in the United States has its own state trademark law. Unfortunately, these laws have application only within the geographic boundaries of the state, and the remedies available for infringement of a state trademark often differ from those available under the federal laws.
It is unlikely that a creative person will find that the state trademark registries provide the kind of protection necessary in today's global society. This is particularly true if the mark is to be used as a domain name on the World Wide Web. In this event, the word used as a URL will actually be displayed throughout the globe, and local protection will not suffice.
As previously noted, there are numerous categories of trade and service marks in which a word may be protected. This is true for trademark purposes; yet, there is only one World Wide Web, and the same name or abbreviation may be adopted by several different businesses in several different countries. Thus, for example, the American Bar Association, known as the ABA, found that it could not obtain the URL for "aba" since that URL had already been taken by the American Booksellers Association.
This situation can give rise to a great deal of confusion and frustration, particularly when the look-alike domain name has been adopted for the express purpose of causing market confusion by deflecting potential customers away from the original owner of the name.
In the early days of the Web, this gave rise to insoluble problems for many individuals and businesses who learned that there was not anything they could do when the owner of an offending URL was located in another state or country. Recently, the situation has changed, and today the World Intellectual Property Organization (WIPO) has established an online arbitration procedure whereby a domain name owner can arbitrate the validity of another's use of a confusingly similar URL, regardless of where the owner of the offending domain name is located.
The proceeding occurs online, and great deference is given to those who have registered their domain names as trademarks and established that they have a priority of use as compared to the other party who has acquired a confusingly similar domain name. All that is available in this process is the opportunity to acquire the offending domain name; damages may not be awarded. Despite this fact, the process is quite beneficial since it is fast and comparatively inexpensive - particularly when compared to the alternative of filing a lawsuit in federal district court.
A creative person who develops something that is new and innovative, functional and not obvious may be entitled to obtain a patent to protect that invention. The patent laws of the United States make it clear that the invention may not have been sold or otherwise disclosed more than one year before the application for a patent is filed, or the invention may not be patented.
As of the date of this writing, the United States is not a party to any multinational patent treaty, though TRIPs does require member countries to implement minimum standards for the protection of inventions. An inventor applying for a patent in the United States must apply for a patent in every country in the world in which a patent is desired before a patent is issued in any country. This means that an inventor desiring international protection must be prepared to invest a great deal of time, money and energy in applying for patents in all desired countries before any patent issues.
Bills have been introduced into the United States Congress which, if adopted, would revise the U.S. patent system and position this country to consider participating in a multinational patent treaty. It is, however, very unlikely that the United States will, in the foreseeable future, become a party to such a treaty.
The Uniform Commission on state laws is a body that has as its mission the adoption of uniform laws throughout the United States. It has drafted the Uniform Trade Secrets Act, which has been adopted by virtually every state. Under this body of law, anything that provides its owner with a commercial advantage and is kept secret may be protected as a trade secret. Anyone who obtains a protected trade secret through improper means will be vulnerable to a damage award, as well as an order preventing the improper use. In addition, the Uniform Trade Secrets Act provides the complaining party with the ability to recover attorney fees incurred in the litigation.
Many countries have adopted laws that are comparable to the Uniform Trade Secrets Act, and it is important for any person who works with innovative work which is commercially valuable and has been kept secret to determine whether any international transactions will be with individuals or businesses in countries having comparable laws. An experienced intellectual property lawyer should be able to assist in making this determination.
Creative people who deal with personal care products or food products must also comply with the labeling requirements of all countries into which their products are imported and sold. Here too it is important to work with an experienced attorney who can research the requirements of the countries in which these products are to be sold.
Most civilized countries have recognized the importance of protecting the environment in which we live. There has been a host of international conferences dealing with environmental protection, and environmental laws have sprung up throughout the world. Unfortunately, the laws are not consistent or uniform. An extensive discussion of the complex and often confusing environmental laws that have blanketed the globe is beyond the scope of this article, but by working with an experienced international environmental lawyer, you should be able to determine the requirements of the countries into which sales of your products are targeted.
The world of international commerce provides creative people with a host of opportunities. It also provides them with a vast array of challenges. These include, among other things, the requirement that one have the skill to create a work with global appeal. It also means that the creative person must be sensitive to the laws, treaties and practices that exist in the countries or venues in which the creative work is to be marketed. The contract used by the creative person to distribute work or provide services must reflect myriad laws, treaties and practices which are present in the desired channels of commerce.
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