Who Owns 'Shaolin'?

The Shaolin temple in a Chinese province of Henan is known for the skill in martial arts performed by its monks. Recently it was finally driven to take action against a rampant commercial abuse of its name in China and abroad. The monks petitioned to secure registration of trademarks “Shaolin” and “Shaolin Temple” with the Chinese government’s General Administration for Industry and Commerce. More than two hundred businesses worldwide, not in the least associated with the temple, use a Shaolin trademark of some sort in selling everything from food to cars. By claiming the Shaolin name, the monks hope to preserve China’s cultural heritage.

Source: ( http://www.usatoday.com/money/2002-09-25-kung-fu-trademark_x.htm)

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Trademark and Other Species of Intellectual Property

Among the three main types of intellectual property of patents, copyrights and trademarks, the important distinction is that in the first two cases the protected right is to the tangible object of creation, in the trademark case – it extends to the public goodwill in the product that a trademark stands for. Copyright and patent protection stems from the desire on the part of the governmental authority to stimulate economic activity by enriching public domain with production of expressive and utilitarian original works. The rationale behind the trademark laws, on the other hand, is based on regulating the quality of information in the marketplace by protecting consumers from misrepresentation by sellers and preventing unfair competition practices.

Copyrights and patents reward original artistic creativity and scientific innovation by securing the rights of authorship, trademarks, on the other hand, allow commercial entities to secure claims to an identity in the marketplace. The property value does not lie within the trademarks themselves, but in the information investments of the companies that they embody.

Since a trademark is just a tool that helps the consumer navigate in the barrage of marketing information by pointing at a particular provider of goods and services, it can be any device - a symbol, a word, a phrase, a sound, a shape, even a color or a smell as long as it communicates a unique identity for the consumer.

Evolution of the Trademark Law

Economic use of trademarks in resolving ownership disputes, aiding advertisement and guarantying quality in the course of trade goes back thousands of years, but it spread dramatically with the emergence of the merchant and craft guilds and their monopolies in the 14th and 15th centuries. Increasingly property value of trademarks was being recognized and by the end of the 19th century its protection was codified in Europe and the United States. http://www.lib.utexas.edu/engin/trademark/timeline/tmindex.html.

The Trademark law in the US (US Code, Title 15, Chapter 22), is founded in the Commerce Clause of the Constitution. The clear tendency in the course of its evolution was to grant more rights to the trademark owners by giving them a cause of action to protect their investments in the advertising process. The logic was that ultimately it would benefit the consumers, who were unable to police trademark infringements on their own.

When the Trademark Protection Act of 1881 was first modified in the Act of 1905, an “intention to deceive” the consumer through trademark misappropriation was substituted with “the likelihood of consumer confusion”.

Explosion of trademark activity in the post-war economy led to the Lanham Act of 1946. It introduced a separate prohibition against unfair methods of competition, expanded the concept of infringement, permitted registration of service marks, provided incontestability status for marks in continuous use for five years, and provided that federal registration of a trademark would constitute "constructive notice of the registrant's claim of ownership thereof." ( http://www.inta.org/about/lanham.html) These provisions form the basic structure of the law today.

The first significant amendment to the law since 1946, the Dilution Act of 1996, moved further to protect business interests. No longer having to prove likelihood of consumer confusion, owners of trademarks that accrued more value by becoming famous were given a course of action against potential dilution of their mark’s distinctiveness by similar marks.

With proliferation of e-trade, another amendment, Anticybersquatting Consumer Protection Act, was signed to law in 1999. It governs trademark infringement through domain names on the internet ( http://www.murdoch.edu.au/elaw/issues/v7n3/kilian73.html).

Question for Discussion: What, if any, consumer interests are taken into consideration with the latest amendments to the Lanham Act?

Useful links:

http://www.law.cornell.edu/topics/trademark.html

http://www.abanet.org/intelprop/4types.html

Source: Merges, Menell, Lemley. "Intellectual Property in the New Technological Age." Aspen Publishers,2003