Amicus Curiae Brief — ITC Limited v. Punchgini, Inc., 128 S. Ct. 288 (2007) (No. 06-1722)

2) | jUL 25 2007

No. 06-1722

IN THE

Supreme Court of the United States

ITC LIMITED,

Petitioner,

¥.

PUNCHGINI, INC., RAJA JHANJEE, PARAGNESH DESAI, VICKY

Vu, DHANDU RAM, MAHENDRA SINGH, BACHAN RAWAT,

BUKHARA GRILL II, INC..

Respondents.

On Petition for Writ of Certiorari to the

United States Court of Appeals for the Second Circuit

BRIEF OF AMICUS CURIAE

AMERICAN INTELLECTUAL PROPERTY LAW

ASSOCIATION

IN SUPPORT OF PETITIONER

AMERICAN INTELLECTUAL

PROPERTY LAW

ASSOCIATION GRAEME B. DINWOODIE*

Judith M. Saffer. President Chicago-Kent College of Law

241 18" Street South 565 W. Adams St.

Suite 700 Chicago. IL 60661

Arlington, Virginia 22202 (312) 906-5138

(703) 415-0780

July 25. 2007

* Counsel of Record

Counsel tor Amicus Curiae

A TL AE RE RR I a a a

TABLE OF CONTENTS

Page

STATEMENT OF INTEREST ..........scccccseees ]

SUMMARY OF ARGUMENT..................... l

PROS ie kik ci occ a6 ones 4

I, Review by This Court Would Resolve

Conflicts Between the Second Circuit

Decision and Other Circuits...............e..00. 4

A. The General Principle of

PT actin casnsccsekessces. 4

B. The Well~Known Marks

SI oat ei Uteeeakckie vnacacvess 5

Oe Re ER a 6

II. The Second Circuit’s Decision Raises

Issues of Exceptional Importance............... 8

A.

B.

The Doctrine Implicates the Core Purposes

OE CEN Ee rere iacata cabo ensaese 8

The Decision Below May Place the United

States in Non-Compliance with International

Obligations and Would Undermine U.S.

NG QOCIMERIRD FUN ss kasbesccsevesccces 10

1. Recent International

\ IRR IS ac aN ada knnusserseses 11

2. History of the Doctrine and its

Importance to American

Pee OS Ee 13

Incorporation of the Doctrine in

PC i a ca ik cis onc ans 17

TET. Cc, Saree wk os ka cans 20

ii

TABLE OF AUTHORITIES

Cases: Page

A. Bourjois & Co. v. Katzel, 260 U.S. 689

Aktieselskabet AF 2] v. Fame Jeans Inc.,

2007 WL 1655877 (D.D.C. June 7, 2007).......... 10

All England Lawn Tennis Club (Wimbledon)

Ltd. v. Creation Aromatiques, Inc., 220 U.S.P.Q.

RG CE 2s BDI s i vias cinsasosccteiasicbunssaion 7

Almacenes Exito S.A. v. El Gallo Meat Mkt., Inc.,

381 F. Supp. 2d 324 (S.D.N.Y. 2005)............. 9

De Beers LV Trademark Ltd. v. DeBeers Diamond

Syndicate, Inc., 440 F. Supp. 2d 249

CE Eh Os isn cs cn ueacudiaceah eee datanantonieee a

Empresa Cubana Del Tabaco v. Culbro Corp.,

70 U.S.P.Q. 2d 1640 (S.D.N.Y. 2004)............. 9

Grupo Gigante S.A. De CV y. Dallo & Co., Inc.,

391 F.3d 1088 (9th Cir. 2004).............. 2, 7, 8-9

Hanover Star Milling Co. v. Metcalf, 240 U.S.

WS CYB so ccbestiaas ainda eee 19

Int’! Bancorp LLC. v. Societe Des Bains De Mer

Et Du Cercle Des Etrangers A Monaco, 329 F.3d

SF CER. GI ois sata sch cnkes cts ccvuavensh 9,18

iil

ITC Ltd. v. Punchgini, Inc., 482 F.3d 135

CE aay SNINE fui dA a ah iiss scab dandhnccete 2, 6, 7, 9, 10

Maison Prunier v. Prunier’s Rest. & Café,

288 N.Y.S.2d 529 (N.Y. Sup. Ct. 1936).... 6, 15

McDonald's Corp. v. Joburgers Drive-Inn Rest.

(Pty) Ltd., 1997 (1) SA 1 (A) (S. Afr.)........... 16

Moseley v. V Secret Catalogue, Inc., 537 U.S. 418,

Aa nrdunhiicis Asada aris anenanadee 8, 19

Mother’s Rests., Inc. v. Mother’s Other Kitchen,

Inc., 218 U.S.P.Q. 1046 (T.T.A.B. 1983)......... 7

Murray v. Schooner Charming Betsy, 6 U.S.

RNIN RUNING is wade cdak i nad be anasbeneekas- 12

Persons Co. Ltd. v. Christman, 900 F.2d 1565

PUN Se I Fh ers cd ncucdonnckveaWarnascubannatkans 7

Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S.

SE ass Ga ke ca cache pa Rana baeeateiak cabens eee 8

Two Pesos, Inc. v Taco Cabana, Inc., 505 U.S.

PU IS FRG uc vas can ak abaktsSusnsd ckeasseennaed 19

United Drug Co. v. Theodore Rectanus Co.,

FOE Ac CIs hdc amas sisdacevawc esata sciwWee 4

Vaudable v. Montmarte, Inc., 193 N.Y.S.2d 332

GE Wx I Rn PRD os oaks adenssacesaceens 6,7, 16

Vimar Seguros y Reaseguros, S.A. v. M/V Sky

PGIOE,, FES Tick. DOM LLG PDs was esses scensanencien 12

iV

Statutes:

ae Sie iW SPER xin cAnivejaengapcceasecekxsaciiadshie 2

EP Rinse CW Pewee nicceescenngeivcadanineies 14,17

SES Boe 8 3c .. - rener rT hererprr er eree 5

EARS we Bi > |) Senne neers meena 5

Paces Me SNR as kev sn sq acexivsepencmnsceseaVes 5

United States-Singapore Free Trade Agreement

Implementation Act, Pub. L. No. 108-78,

FEF I SIMU D cds vc ni se inuswecmnadivecavencnt 12

Uruguay Round Agreements Act, Pub. L. No.

103-465, 108 Stat. 4809 (1994)....... ee. 20

Treaties and Agreements:

Agreement on Trade-Related Aspects of

Intellectual Property Rights, Apr. 15, 1994,

ce eS i Be trea Te 6, 13, 15

Free Trade Agreement, U.S.-Jordan, Oct. 4, 2000,

http://www.ustr.gov/assets/Trade_Agreements/Bilat

eral/Jordan/asset_upload_file250_5112.pdf.

PORE A COLL POND ope OL Sr TEP ty em eer 11-12

v

Free Trade Agreement, U.S.-Korea, June 1, 2007,

http://www.ustr.gov/Trade_Agreements/Bilateral/

Republic_of_Korea_FTA/Draft_Text/

Ie oss vi vicwsvsaraasebassvencuans 12

Free Trade Agreement, U.S.-Sing., May 6, 2003,

http://www.ustr.gov/Trade_Agreements/Bilateral/Si

ngapore_FTA/Section_Index.html............. 1]

Joint Recommendation Concerning Provisions

on the Protection of Well-Known Marks,

adopted by Assembly of the Paris Union for

the Protection of Industrial Property and General

Assembly of the World Intellectual Property

Organization, WIPO Doc. 833(E)

GIRNNE NIP Ua uk idnwsdincnkiacuceksussainacsiesnens 11

Paris Convention for the Protection of Industrial

Property, Mar. 20, 1883, as last revised at

Stockholm, July 14, 1967, 21 U.S.T. 1583,

ey MEETS Es a bin ccc dad adshians 4,13, 14

Legislative History:

H.R. Rep. No. 104-374 (1995), as reprinted

i T99G SIS EAN, TOZ9.....o0c5...00. 12-13

S. Rep. No. 79-1333 (1946), as reprinted in

oy be 2 oe eR ee) eee 8, 10

S. Rep. No. 103-412 (1994). ................ 19-20

vi

Miscellaneous:

J. Thomas McCarthy, Lanham Act § 43(a): The

Sleeping Giant is Now Awake, 59 J. LAW &

CONTEMP. PROG. 43 CEFR. vcccccesccssssvescscxsn 19

5 J. THOMAS MCCARTHY, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION

CE IR Se ink dkikncunticcnuntvevesacks 5, 18, 19, 20

Frederick W. Mostert, International Recognition

and Protection of Famous Marks, in FAMOUS AND

WELL KNOWN MARKS (Frederick W. Mostert ed.,

pe Re mere rere eee One 9,14

G.H.C. BODENHAUSEN, GUIDE TO THE APPLICATION

OF THE PARIS CONVENTION FOR THE PROTECTION OF

INDUSTRIAL PROPERTY (1968)...............000005 14

Global Brands Scorecard 2006, Business

Wr, FA. Fy Hea hai kona ne kasd panenekndee conus 16

Graeme B. Dinwoodie, Trademarks and Territory:

Detaching Trademark Law From the Nation State,

41 Hous. L. REV. 885 (2004)...............004 , » 14

Ludwig Baeumer, /nternational Legislative History,

within the Framework of WIPO, of the Recognition

and Protection of Famous and Well-Known Marks,

in FAMOUS AND WELL KNOWN MARKS (Frederick

W. Wistert 6G. 20 60. 2O04)..... vccccccesscscess ia

Vili

Office of the U.S. Trade Rep., 2007 “Special 301”

Report (Apr. 30, 2007),http://www.ustr.gov/assets/

Document_Library/Reports_Publications/2007/

2007_Special_301_Review/asset_upload_file643_

Bee IS ass depend caculadceccunelidvapensesstie 15

J

STATEMENT OF INTEREST!

The American Intellectual Property Law

Association (the “AIPLA”) is a national bar

association of more than 16,000 members with

interests and practices primarily in the areas of

trademark, copyright, trade secret, patent and other

areas of intellectual property law. Unlike areas of

practice in which separate and distinct plaintiff's

and defendant's bars exist, most intellectual

property law attorneys represent both intellectual

property owners and alleged infringers.

The AIPLA has no interest in any party to

this litigation or stake in outcome of this case, other

than its interest in seeing a correct and consistent

interpretation of the law affecting trademarks and

unfair competition.

In accordance with Supreme Court Rule

37.2(a), the AIPLA has obtained written consent to

the filing of this brief from the counsel of record for

both parties. The letters of consent have been filed

with the Clerk of the Court.

SUMMARY OF ARGUMENT

Under the traditional view of the

territoriality principle, pnonty of nghts in the

In accordance with Supreme Court Rule 37.6, the

AIPLA states that this brief was not authored, in whole or in

part, by counsel to a party to the instant Petition, and that no

monetary contribution to the preparation or submission of this

brief was made by any person or entity other than the AIPLA

or its counsel.

y

United States depends solely upon use in U.S.

commerce. The well-known marks doctrine,

properly applied, would provide an exception to this

general rule and protect a foreign mark that is well-

known but not used in the United States. In /7C

Ltd. v. Punchgini, Inc., 482 F.3d 135, 165 (2d Cir.

2007), a panel of the Second Circuit refused to

recognize such a doctrine notwithstanding that “a

persuasive policy argument can be advanced in [its]

support.” This decision conflicts directly with the

decision of the Court of Appeals for the Ninth

Circuit in Grupo Gigante S.A. De CV v. Dallo &

Co., Inc., 391 F.3d 1088 (9" Cir. 2004), which

recognized the well-known marks doctrine.

Whether federal law recognizes the “well-

known marks” doctrine presents an extremely

important issue of trademark and unfair competition

law. The well-known marks doctrine helps to

effectuate the purposes of the Lanham Act, 15

U.S.C. § 1051 et seg. Rigid application of the

general principle of territoriality absent a well-

known marks exception would permit deception of

American consumers about the goods and services

offered to them in the United States. The well-

known marks doctrine also ensures that mark

Owners are protected against opportunistic

appropriation of marks by pirates in markets in

which the mark owner has established a reputation

but has not yet made commercial use of its mark. In

short, both substantive objectives of the Lanham

Act are furthered by recognition of the doctrine.

Moreover, Congress attempted through the

Lanham Act to create nationwide protection for

3

trademarks, consistent with international obligations

undertaken by the United States. The decision of

the Second Circuit would render protection of well-

known marks a matter of state law, disrupting the

goal of uniform nationwide protection.

It also would put the United States at odds

with its international obligations. And failure to

recognize the well-known marks doctrine would

also undermine efforts of the United States

government in international negotiations to secure

reciprocal protection in foreign countries for owners

of well-known American marks. Specifically, the

United States has committed itself to the protection

of well-known foreign marks that have not been

used in the United States in return for a

commitment by foreign nations that well-known

American marks that have not been used or

registered in foreign countries will be protected

there against appropriation by local pirates.

From the perspective of producers, the well-

known marks doctrine is particularly important in

countries operating a registration-based (as opposed

to use-based) trademark system, which includes

most countries other than the United States. The

doctrine also tends to be of special significance to

multinational brand owners. As a result,

international recognition of the doctrine is critical to

American interests.

The AIPLA takes no position on which

party should prevail in this case if a federal well-

known marks doctrine is recognized by this Court.

Instead, the AIPLA urges the Court to grant the

4

petition for certiorari and to hold that the general

principle of territoriality in trademark law is subject

to an exception in which protection is afforded to a

foreign mark which, though not used in the United

States, is proven to be well-known here.

ARGUMENT

I. Review by This Court Would Resolve

Conflicts Between the Second Circuit

Decision and Other Circuits

A. The General Principle of Territoriality

Trademark rights are territorial. See A.

Bourjois & Co. v. Katzel, 260 U.S. 689, 692 (1923).

This bedrock principle of U.S. law is fully

consistent with the Paris Convention for the

Protection of Industrial Property (‘Paris

Convention”), the leading international trademark

treaty. See Paris Convention for the Protection of

Industrial Property, arts. 6(1), 6(3), Mar. 20, 1883,

as last revised at Stockholm, July 14, 1967, 21

U.S.T. 1583, 828 U.N.T.S. 305 (recognizing the

principle of territoriality).

Although most countries in the Paris Union

grant rights to the first person to register a mark,

under U.S. law, the first person to use a mark

generally obtains superior rights in that mark. See

United Drug Co. y. Theodore Rectanus Co., 248

U.S. 90, 97 (1918). Courts have held that the

plainuff's use must be a “use in commerce” in order

to create common law trademark rights in the

5

United States. As discussed below, see infra pages

17-19, the text of the Lanham Act arguably is more

expansive than currently recognized by case law,

but the general rule is well-accepted. Thus, use of a

mark in another country typically does not create

trademark rights in the United States. See 5 J.

THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS

AND UNFAIR COMPETITION, § 29:2, at 29-7 (2007)

(“Priority of trademark rights in the United States

depends solely upon priority of use in the United

States, not on priority of use anywhere in the

world’’).

B. The Well-Known Marks Doctrine

There are exceptions to the rule that

trademark rights can only be acquired in the United

States after the mark in question has been used here.

For example, both Sections 44 and 66 of the

Lanham Act provide means for foreign mark

owners to acquire U.S. rights to marks that are not

yet used in the United States. See 15 U.S.C §§

1126(e), 1141h (2006). The well-known marks

doctrine,” as understood by the United States

government and U.S. courts recognizing the

> Among U.S. courts and commentators, the doctrine is

often alternatively called the “famous marks” doctrine.

Because the term “famous mark” has become a term of art in

trademark dilution law, see 15 U.S.C. § 1125(c) (2006), courts

and litigants often confuse the two concepts. Yet, the

concepts of protection against dilution and protection for well-

known marks are quite different. See Graeme B. Dinwoodie,

Trademarks and Territory: Detaching Trademark Law From

the Nation State, 41 Hous. L. REV. 885, 926-927 (2004). For

that reason, we use the term “well-known mark” in this brief.

6

doctrine, is also an exception to this general rule.

Under that doctrine, a foreign mark that is well-

known but not used in the United States is protected

against unauthorized uses here by third parties that

are likely to cause confusion.

ae Circuit Conflict

In the court below, a panel of the Second

Circuit held that federal trademark and unfair

competition law did not recognize a “well-known

marks” exception to the principle of territoriality.

ITC, 482 F.3d at 165. The panel acknowledged that

the doctrine was recognized in both Article 6dis of

the Paris Convention and Article 16 of the TRIPS

Agreement, see Agreement on Trade-Related

Aspects of Intellectual Property Rights, Apr. 15,

1994, 1869 U.N.T.S. 299 (“TRIPS Agreement”),

but found that the Lanham Act provided no basis on

which to recognize it. /d. at 161-163. In light of this

conclusion, the court was not willing to develop the

doctrine as a matter of policy notwithstanding that

“a persuasive policy argument can be advanced in

[its] support.” /d. at 165. Instead, the panel found

that any case law recognizing the doctrine simply

reflected the law of the State of New York, see

Maison Prunier v. Prunier Rest & Café, 159 Misc.

S31, 286 N.Y.5.2d 529 (N.Y. Sup.Ct. 1936),

Vaudable vy. Montmarte, Inc., 20 Misc.2d 757, 193

N.Y.S.2d 332 (N.Y. Sup. Ct. 1959), and was

grounded in common law principles of unfair

compeution. See /TC, 482 F.3d at 157-158.

The Second Circuit's decision creates a direct

conflict with the decision of the Court of Appeals

J

for the Ninth Circuit in Grupo Gigante, 391 F.3d at

1094 (recognizing well-known marks doctrine), and

arguably with the position adopted by the Court of

Appeals for the Federal Circuit. See Persons Co.

Ltd v. Christman, 900 F.2d 1565, 1569-1570 (Fed.

Cir. 1990) (noting case law finding bad faith

sufficient to defeat the rights of the first user in the

United States as against a foreign mark owner

“where (1) the foreign mark ts famous here or (2)

the use is a nominal one made solely to block the

prior foreign user’s planned expansion into the

United States”) (citing, inter alia, Vaudable, 20

Misc. 2d at 757); see also The All England Lawn

Tennis Club (Wimbledon) Ltd. v. Creation

Aromatiques, Inc., 220 U.S.P.Q. 1069, 1072

(T.T.A.B. 1983); Mother’s Rests., Inc. v. Mother’s

Other Kitchen, Inc., 218 U.S.P.Q. 1046, 1048

(T.T.A.B. 1983).

The Ninth Circuit in Grupo Gigante found

solid support for the doctrine within the general

purposes of the Lanham Act:

While the territoriality principle is a long-

standing and important doctrine within

trademark law, it cannot be absolute. An

absolute territoriality rule without a famous-

mark exception would promote consumer

confusion and fraud. Commerce crosses

borders. In this nation of immigrants, so do

people. Trademark is, at its core, about

protecting against consumer confusion and

“palming off.” There can be no justification

for using trademark law to fool immigrants

into thinking that they are buying from the

8

store they liked back home.

Grupo Gigante, 39) F.3d at 1094.

II. The Second Circuit's Decision Raises Issues

of Exceptional Importance

A. The Doctrine Implicates the Core Purposes of

the Lanham Act

When Congress enacted the Lanham Act, it

identified two primary justifications for trademark

protection: to “protect the public so that it may be

confident that, in purchasing a product bearing a

particular trademark which it favorably knows, it

will get the product which it asks for and which it

wants to get”; and to ensure that “where the owner

of a trademark has spent energy, time and money in

presenting to the public the product, he is protected

in his investment from its appropriation by pirates

and cheats.” S. Rep. No. 79-1333, at 3 (1946),

reprinted in 1946 U.S.C.C.A.N. 1274, 1277. These

purposes, drawn from the common law of

trademarks that Congress was largely codifying,

continue to guide the development of federal

trademark and unfair competition law. See Qualitex

Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-164

(1995) (Breyer J.); Moseley v. V Secret Catalogue,

Inc., 537 U.S. 418, 428 (2003) (Stevens J.).

These substantive purposes are implicated

by the well-known marks doctrine. The potential

protection for consumers was acknowledged both

by the Ninth Circuit in recognizing the doctrine and

9

the Second Circuit in rejecting it. See Grupo

Gigante, 391 F.3d at 1094 (“there can be no

justification for using trademark law to fool

immigrants into thinking that they are buying from

the store they liked back home”); J7C, 482 F.3d at

165 (noting that “a persuasive policy argument can

be advanced in support [of the doctrine]”); see also

International Bancorp LLC v. Societe Des Bains De

Mer Et Du Cercle Des Etrangers A Monaco, 329

F.3d 372, 381-82 (4 Cir. 2003) (noting that the

doctrine recognizes the undesirability of domestic

confusion resulting from use of foreign marks).

Clearly, the doctrine serves to protect mark owners

against appropriation of goodwill by pirates and

opportunists.

The importance of the well-known marks

doctrine to the ability of U.S. trademark law to

vindicate these purposes has increased of late. See

Frederick W. Mostert, International Recognition

and Protection of Famous Marks, §§ 1-1 to 1-4, in

FREDERICK W. MOSTERT, FAMOUS AND WELL

KNOWN MARKS (2d ed. 2004). In an era of

enhanced digital communications technologies,

widespread international travel, global trade, and

fluid immigration patterns, rigid application of the

general principle of territonality would lead to the

confusion of American consumers. It is not

Surprising, therefore, that the number of cases in

which this doctrine is invoked is rising. See, e.g.,

De Beers LV Trademark Lid. v. DeBeers Diamond

Syndicate, Inc., 440 F. Supp.2d 249 (S.D.N.Y.

2006); Almacenes Exito S.A. v. El Gallo Meat

Market, Inc., 381 F. Supp.2d 324 (S.D..Y. 2005);

Empresa Cubana Del Tabaco v. Culbro Corp., 70

10

U.S.P.Q.2d 1640 (S.D.N.Y. 2004), rev'd in part on

other grounds, 399 F.3d 462 (2d Cir. 2005);

Aktieselskabet AF 21 v. Fame Jeans Inc., 2007 WL

1655877 (D.D.C. June 7, 2007).

The well-known marks doctrine also affects

other objectives that Congress sought to pursue in

adopting the Lanham Act. The Lanham Act sought

to facilitate enforcement of rights on a national,

rather than local, basis partly because commerce

was becoming more national. See S. Rep. No. 79-

1333, at 4, reprinted in 1946 U.S.C.C.A.N. at 1277.

Yet, the decision of the Second Circuit would

imperil such uniformity, making well-known marks

protectable only under laws of various states. See

ITC, 482 F.3d at 160.

B. The Decision Below May Place the United

States in Non-Compliance with International

Obligations and Would Undermine US.

Negotiating Positions

The Lanham Act was also an attempt to

implement international obligations —_- under

trademark treaties and thus secure reciprocal

benefits abroad for American traders. See S. Rep.

No. 79-1333 at 3, reprinted in 1946 U.S.C.C.A.N.

at 1276. Recent international obligations assumed

by the United States mandate a well-known marks

doctrine that protects marks without use in the

United States. If the decision of the Second Circuit

is correct, the United States may be subject to

accusations that it is in breach of those obligations.

Moreover, that decision would undermine the

efforts of the United States government in

11

international negotiations to secure reciprocal

protection for owners of well-known American

marks in foreign countries.

8 Recent International Obligations

The United States has assumed international

obligations to protect well-known marks that are not

used in U.S. commerce by ratifying bilateral trade

agreements that call for recognition of the well-

known marks doctrine. In 2001, the World

Intellectual Property Organization (“WIPO”)

General Assemblies and the Paris Union agreed to a

“Joint Recommendation on Well-Known Marks”,

which stipulates that a well-known mark will be

protected in a specific country on the ground that it

is well-known in that country, even if the mark is

neither registered nor used there. See Joint

Recommendation Concerning Provisions on the

Protection of Well-Known Marks, adopted by

Assembly of the Paris Union for the Protection of

Industrial Property and General Assembly of the

World Intellectual Property Organization, WIPO

Doc. 833(E), art. 2(3)(i) (Sept. 1999) (hereinafter

“Joint Recommendation on Well-Known Marks’).

The U.S. government has since included

compliance with the Joint Recommendation as a

term in at least two bilateral trade agreements. See,

e.g., Free Trade Agreement, May 6, 2003, U.S.-

Sing., art. 16.1(2)(b)G) (providing that each party

shall give effect to the Joint Recommendation on

Well-Known Marks), http://www.ustr.gov/Trade_

Agreements/Bilateral/Singapore_FTA/Section_Inde

x.html; Free Trade Agreement, Oct. 24, 2000, U.S.-

12

Jordan, art. 4(1)(a)(same), http://www.ustr.gov/asset

s/Trade_A greements/Bilateral/Jordan/asset_upload_

file250_5112.pdf. Although these agreements are

not directly effective in U.S. law, see, e.g., United

States-Singapore Free Trade § Agreement

Implementation Act, Pub. L. No. 108-78, § 102(a),

117 Stat. 948 (2003), courts should hesitate before

construing U.S. domestic law as inconsistent with

the international obligations of the United States.

See Murray v. Schooner Charming Betsy, 6 U.S. (2

Cranch) 64 (1804).

Moreover, ensuring effective protection for

well-known marks remains a key part of the trade

policy of the United States. For example, in the

most recently concluded bilateral trade agreement

with the Republic of Korea, the parties elaborated

upon the operation of the doctrine in a number of

ways designed to ensure its fullest possible

effectiveness. See Free Trade Agreement, June 1,

2007, U.S.-Korea, art. 18.2(6), at http://www.ustr.g

ov/Trade_Agreements/Bilateral/Republic_of_Korea

_FTA/Draft_Text/Section_Index.html. Obviously,

the U.S. government’s efforts to negotiate

international protection of well-known marks would

be seriously undermined if our own laws are

construed as denying such protection. See Vimar

Segurosy Reaseguros, S.A. v. M/V Sky Reefer, 515

U.S. 528, 539 (1995) (“If the United States is to be

able to gain the benefits of international accords and

have a role as a trusted partner in multilateral

endeavors, its courts should be most cautious before

interpreting its domestic legislation in such a

manner as to violate international agreements”); see

also H.R. Rep. No. 104-374, at 4 (1995), reprinted

13

in 1996 U.S.C.C.A.N. at 1029, 1030 (suggesting

that passage of the federal dilution law would

“assist the executive branch in its bilateral and

multilateral negotiations with other countries to

secure greater protection for the famous marks

owned by U.S. companies.”).

2. History of the Doctrine and its Importance

to American Trademark Owners

The genesis of the well-known marks doctrine

is Article 6bis of the Paris Convention. That article

requires member states,

[a]t the request of an interested party, to

refuse or to cancel the registration, and to

prohibit the use, of a trademark which

constitutes a reproduction, an imitation, or a

translation, liable to create confusion, of a

mark considered by the competent authority

of the country of registration or use to be

well known in that country as being already

the mark of a person entitled to the benefits

of this Convention and used for identical or

similar goods.

Paris Convention, art. 6bis; see also TRIPS

Agreement, art. 16(2) (extending protection to well-

known service marks).

Because the text of Article 6bis mandated

protection only for well-known marks that had not

been registered in the country where protection was

sought, the provision imposed minimal obligations

on the United States. In the United States, the

14

protection of marks used but not registered here was

largely accomplished by the availability of

protection for unregistered marks in Lanham Act

Section 43(a). See 15 U.S.C. § 1125(a)(1)(A)

(2006).

At the 1958 Revision Conference of the

Paris Union, the United States proposed expanding

Article 6bis to mandate protection for well-known

marks that had been neither used nor registered in

the country where protection was sought. See

Ludwig Baeumer, International Legislative History,

within the Framework of WIPO, of the Recognition

and Protection of Famous and Well-Known Marks,

in MOSTERT, at §§ 3-1, at 3-9. Although that

proposal was defeated, the narrow margin of defeat

(only 2 nay votes out of 27 votes cast) suggested

that most countries would protect well-known

marks without use in their country. See G.H.C.

BODENHAUSEN, GUIDE TO THE APPLICATION OF THE

PARIS CONVENTION FOR THE PROTECTION OF

INDUSTRIAL PROPERTY 91 (1968) (predicting in

1968 that “the great majority of member states will

probably adopt this attitude”). And many countries

now do so. See Mostert, at §§ 1-33 to 1-34 n.91

(listing case law from several countries). The Paris

Convention only imposes minimum obligations, and

member states are thus free to protect well-known

marks without local use. See Dinwoodie,

Trademarks and Territory, 41 Hous. L. Rev. at 913.

Indeed, the first courts in the United States

to apply the well-known marks doctrine exceeded

what was required under the Paris Convention in

other respects. International Jaw mandated

15

protection for well-known service marks (as

distinguished from trademarks) only in 1994, when

the TRIPS Agreement strengthened the protection

for well-known marks, see TRIPS, art. 16(3), and

explicitly extended protection to well-known

service marks, see id. art. 16(2). Yet, U.S. courts

had long protected well-known service marks. See,

e.g., Maison Prunier, 288 N.Y.S.2d 529; Vaudable,

193 N.Y.S.2d 332.

The United States has encouraged other

nations to protect well-known American marks

that have not been used or registered in foreign

countries against appropriation by local pirates.

See Office of the United States Trade

Representative, 2007 Special 301 Report 48

/April 30, 2007/ /commending the Chinese courts

for recognizing KODAK as a well-known mark/,

http://www.ustr.gov/assets/Document_Library/Re

ports_Publications/2007/2007_Special_301_Revie

w/asset_upload_file643_11122.pdf. The well-

known marks’ doctrine is of particular

.YY art ral tn marnan tun aAanm arl- ALT nay a

imporvance ww <vamecrican traacmarx owncrs

seeking to market goods in countries operating a

registration-based /as opposed to use-based/

trademark system. In those countries, an

opportunistic local party can secure priority over

the American owner of the well-known mark by

the simple and cheap option of registering. The

well-known marks doctrine protects the true

mark owner in these situations. For example, it 1s

the well-known marks doctrine that thus protected

the ability of the McDonald’s Corporation to

expand its business into South Africa

notwithstanding registration of the MCDONALD'S

16

mark by local “entrepreneurs.” See McDonald's

Corp. v. Joburgers Drive-Inn Rest. (Pty) Ltd., 1997

(1) S.A. 1 (A) (S. Afr.). This doctrine also

prevented Russian pirates who had registered the

mark STARBUCKS in Russia from extorting

$600,000 from the American coffee company when

it contemplated opening there. See 5 MCCARTHY, §

29.61 at 29-176 n. 6 (reporting Russian litigation).

If other countries impose a local use

requirement, U.S. businesses would suffer.

The well-known marks doctrine also tends

to be of special significance to multinational or

global brand owners. As a result, international

recognition of the doctrine is particularly important

to American interests. See The Global Brands

Scorecard 2006, Business Week, Aug. 7, 2006, also

available at http://www.finfacts.ie/brands.htm

(noting that American brands occupy “7 of the top

10 brands in a ranking of ‘global brands,’” a

category requiring inter alia, that the “brand

have a minimum brand value of US$2.7 billion,

achieve about one third of [its] earnings outside of

[its] home country, ... and have a wider public

profile beyond [its] direct customer base”). Even

well-known marks may not be used everywhere,

and registration in all countries can be financially

prohibitive; trademark owners often delay the

expense of registering their marks in places not

presently used until they have plans to expand their

business into those countries.

17

Sow Incorporation of Doctrine in Federal Law

Application of the well-known marks

woctrine is encompassed by the literal language of

Section 43(a), the principal unfair competition

provision in the Lanham Act.? Section 43(a)

provides that:

Any person who, on or in connection with

any goods or services, or any container for

goods, uses in Commerce any word, term,

name, symbol, or device, or any

combination thereof, or any false

designation of origin, false or misleading

description of fact, or false or ananng

representation of fact, which—

(A) is likely to cause confusion, or to

cause mistake, or to deceive as to the

affiliation, connection, or association of

such person with another person, or as to the

origin, sponsorship, or approval of his or her

goods, services, or commercial activities by

another person...

* The Second Circu®* . acluded that, although the

doctrine might be consistent « «i the purpose of the Lanham

Act, it was for Congress to make the statutory amendments

necessary to recognize the doctrine. But the language of

Section 43(a) clearly admits recognition of the doctrine, as

Congress has no doubt assumed in enacting a number of

reforms designed to preserve the position of the United States

as the leading advocate of international trademark protection

without specifically referencing the well-known marks

doctrine in a separate statutory provision.

18

. Shall be liable in a civil action by any

person who believes that he or she is or is

likely to be damaged by such act.

15 U.S.C. § 1125(a)(1)(A) (2006).

Some courts have held that in order to bring

an infringement claim in the U.S. courts, a plaintiff

must show that it has made prior use of the mark in

the United States. However, there is no statutory

basis for this requirement in an action under Section

43(a). See 5 MCCARTHY, § 29:2, at 29-10 n.10.

Instead, use in the United States (or more strictly,

“use in commerce,”) is an explicit element essential

only of a defendant’s allegedly infringing use.

Thus, as Professor McCarthy has noted, a

literal reading of Section 43(a) clearly allows room

for the protection of marks that are well-known in

the United States even if they have not been used in

this country. See 5 MCCARTHY, at § 29:4 at 29-21

(“Lanham Act § 43(a) gives a foreign national

without a federal registration of its mark standing to

sue in a federal court [and] invoke the well-known

marks doctrine of the Paris Convention Article

6bis”); cf Int'l Bancorp, 329 F.3d at 382 (Luttig

CJ.) (Lltmmately, though, if [plaintiff's] mark

merits protection under the statute, we must provide

it to them. We do not know that this is ‘reverse

imperialism,’ but we do know that... if such

owners, upon their petition, can demonstrate that

they meet the requirements of the statute, that they

are then entitled to protection, and that it is beyond

us to refuse it to them”) (emphasis in original).

19

Moreover, this reading of Section 43(a) is

fully consistent with the common law relationship

between trademark and unfair competition law.

“(T]he common law of trademarks is but a part of

the broader law of unfair competition,” Hanover

Star Milling Co. v. Metcalf, 240 U.S. 403, 413

(1916), and the Lanham Act reflects this fact. See

Moseley, 537 U.S. at 428 (Stevens J.) (“Traditional

trademark infringement law is a part of the broader

law of unfair competition, that has its sources in

English common law, and was largely codified in

the Trademark Act of 1946”) (citations omitted),

Two Pesos, Inc. v Taco Cabana, Inc., 505 U.S. 763,

787 (1992) (Thomas J., concurring) (noting that

protection should be available for conduct coming

within the scope of the text of Section 43(a) without

regard to the provisions of the Lanham Act that deal

with registration).*

* The Lanham Act may also be seen to have incorporated

the well-known marks doctrine through Section 44. See 5

MCCARTHY, § 29:61, at 29-177 (concluding that the

international obligation to protect well-known marks “is

enforced in the United States by Lanham Act § 44(b) and §

44(h)"); cf id. § 29:4, at 29-20 to 29-21 (also relying on

Section 43(a)). Although Section 44 is clearly one of the

provisions by which Congress sought to implement our

country’s international obligations, the precise rights conferred

by section 44 are unclear. See J. Thomas McCarthy, Lanham

Act § 43(a): The Sleeping Giant is Now Awake, 59 J. LAW &

CONTEMP. PROB. 45, 48-50 (1996). Alternatively, some might

argue that the international instruments discussed above may

have introduced the doctrine directly into U.S. law. See 5

MCCARTHY, at § 29:61-62, at 29-166 to 29-176 to -177

(“There is no doubt that both the TRIPS Agreement and the

Paris Convention Article 6bis require the United States to

recognize nghts in an unregistered mark if the mark is so well-

known that confusion is likely to result.”). However, there ts

20

III. Conclusion

For the foregoing reasons, the AIPLA

respectfully requests that the Court grant certiorari

to review the Second Circuit panel's decision. The

Court should grant that review to clarify that the

well-known marks doctrine is recognized under

federal trademark and unfair competition law.

Respectfully submitted,

AMERICAN INTELLECTUAL

PROPERTY LAW

ASSOCIATION GRAEME B. DINWOODIE*

Judith M. Saffer, President Chicago-Kent College of Law

241 18" Street South 565 W. Adams St.

Arlington, Virginia 22202 Chicago, IL 60661

(703) 415-0780 (312) 906-5138

July 25, 2007

* Counsel of Record

Counsel for Amicus Curiae

substantial disagreement in the lower courts as to whether the

Paris Convention is self-executing, see generally 5

MCCARTHY, at 29:33 at 29-88 to -94, and as discussed above

that treaty did not in any event mandate that the well-known

marks doctrine protect marks that have been neither registered

nor used in a particular country. The TRIPS Agreement is not

self-executing. See S.Rep. No. 103-412, at 13 (1994);

Uruguay Round Agreements Act, Pub.L. No. 103-465, 108

Stat. 4809 (1994),