photo-1464688934599-fc5108f8d1afTwo words, uttered in a certain tone and with a certain speed, are apt to suggest a bit of wastefulness, a touch of anarchy, and yet a sense of communal participation.  Those two words, from Faber College of lore to present discussions of law: Food Fight!!!!!.  And, we see the long smoldering discussions of geographical indications, or GIs, as part of the Transatlantic Trade and Investment Partnership negotiations are prompting some (such as the US Based Consortium for Common Food Names) to lay out just what might be at stake in this food fight.  Though such groups are concerned that the Transatlantic Trade and Investment Partnership could provide legal ammunition for foreign manufacturers to up end American markets, those same groups overlook the fact that such legal ammunition may already exist.

First, as to GIs, one could ask the same question as Faber College’s most distinguished alum: “See if you can guess what am I now?”    Traditionally, GIs are protected and protective designations under the laws of certain countries and of the European Union itself that require products using or referencing that region or products associated with that region must  actually originate in the corresponding region.  Examples of this would include “feta” or “parmesan” as applied to cheese, or “Chablis” or “Bordeaux” as applied to wine.  As noted by the World Intellectual Property Organization, a GI “is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production.”  But what GIs are now is a source of some controversy and fear as part of the continuing discussion of “harmonization” of trade rules as part of the negotiations of the Transatlantic Trade and Investment Partnership.  The US dairy industry, as recently reported for example, sees harmonization as potentially requiring US cheese manufacturers and distributers to give up the valuable (i.e. $59 billion over ten years) ability to use words like “feta” or “parmesan” in connection with US manufactured cheese products, as noted in the recent report.  The view from the European side certainly counters with the impact on them of not enforcing such protections, as described in Atlantic Monthly recently.

Second, the present focus on the Transatlantic Trade and Investment Partnership discussions may create a false sense of security of US manufacturers, who may assume that GIs cannot present them with a present or future problem unless that treaty results in troublesome (from their perspective) harmonization language.  But that is far from the case, as US law already recognizes in many ways the power and enforceability of geographic indicators.  For example, no fraternity brothers’ escape will help US manufacturers out run already existing treaty obligations, such as those under Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), to which the United States is already a signatory.  The TRIPS Agreement already requires the US to provide other signatories methods of enforcement of GIs within the US:

In respect of all geographical indications, interested parties must have legal means to prevent use of indications which mislead the public as to the geographical origin of the good, and use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention… Article 23 provides that interested parties must have the legal means to prevent the use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication. This applies even where the public is not being misled, there is no unfair competition and the true origin of the good is indicated or the geographical indication is accompanied be expressions such as “kind”, “type”, “style”, “imitation” or the like. Similar protection must be given to geographical indications identifying spirits when used on spirits. Protection against registration of a trademark must be provided accordingly.

[WIPO Overview of TRIPS Agreement]

In fact, in the wake of other trade deals such as NAFTA, the Lanham Act was amended years ago; federal courts thereafter recognized that interested parties could enjoin “geographically deceptively misdescriptive” product names that deceived consumers from being used, as seen in In re California Innovations, Inc., 329 F. 3d 1334 (Fed. Cir.t 2003).  While a full harmonization (assuming adoption of European style protections) might ease a GI holders burden of proof from that which they might have under current US law, GI holders have present resort to US courts if they can make their case.  Id. at 1341. (one can challenge another’s use of a GI “if (1) the primary significance of the mark is a generally known geographic location, (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods bearing the mark, when in fact the goods do not come from that place, and (3) the misrepresentation was a material factor in the consumer’s decision.”); accord In re The Newbridge Cutlery Co., 776 F. 3d 854 (Fed. Cir. 2015).  Also, false advertising laws and unfair competition prohibitions long existing under US law would also seem to provide GI holders wishing to compete (and enforce their product pedigree) within the US with ammunition to do so, subject to defenses of secondary meaning or the like.  Korber Hats, Inc. v. FTC, 311 F. 2d 358 (1st Cir. 1962).  Indeed, it would have been interesting to see how the Court in Kangadis, Inc. v. Euphrates, Inc., 378 F. Supp. 2d 162 (EDNY 2005), might have dealt with a false advertising claim in case where the mark “traditional” applied to feta cheese was found to be descriptive, but potentially also noted possibly being a “deceptively descriptive mark[],” because that feta cheese was not in fact made in the traditional manner “made by hand, aged in barrels, and with sheep’s milk.” Id. at 166.

One must view the dairy industries report in light of these legal concepts and pre-existing treaties.  While resisting new GI language in the Transatlantic Trade and Investment Partnership may provide some protection for established US interests, it may ultimately be a “futile… gesture” given existing treaty rights and other legal theories that could support GI-inspired claims against US purveyors of European-style foods and wines actually made in the United States.  Of course, the same rules might apply to protecting US pride in Boston Cream Pie, New England clam chowder, Manhattan clam chowder, Long Island ice tea, Texas barbecue (or Kansas City barbecue), Boston baked beans, New York cheese cake, Buffalo wings, California roll, and even Tuxedos, but somehow I doubt the same economic incentives are there.