Monday, November 11, 2019

174. Can geographical indicators like mountains and rivers copyrighted? P S Remesh Chandran


Can geographical indicators like mountains and rivers copyrighted?

P S Remesh Chandran

Editor, Sahyadri Books & Bloom Books, Trivandrum

  Article Title Image 1 By Sabine-Schwoaze. Graphics: Adobe SP.

Without bribery and corruption, no geographical names will ever get registered as the applicants do not own these geographical landmarks.

Domain disputes are not the first or the last in this world. It is because it is humans who are involved in the registering of geographical indicators and humans are prone to corruption and bribery. When you apply for registering the name of a place, mountain or river for your product, goods or service, these humans will first tell you that it cannot be registered because doing so would be infringing the rights of others to use that name in future. So you will offer money and the name gets registered. This is what actually happens. All competent authorities know what hurdles it would pose for future venturers in the field and therefore they raise the amount for getting it done. Without bribery and corruption, no geographical names will ever get registered as the applicants do not own these geographical landmarks. So we can say that the rich wins in many cases, but not always. The Tatas of India lost their case over the Himalayas when they claimed the Himalayas was theirs and tried to stop others from using the name of this highest mountain range in the world. So the rich does not always win. They claimed Himalayas and Mineral Water were their registered and copyrighted properties and other Mineral Water companies shall not use the word Himalayas. They could not prove Himalayas and Mineral Water were their creations and that they own them. Why they didn’t register their product as ‘Tata’s Mineral Water from the Himalayas’ was just to try to keep a monopoly in the mineral water trade and prevent other mineral water companies from using the word Himalayas- a very dirty business tool indeed! 

Irrespective of how many key words are added, landmarks are people’s, and protected.

‘Anyone who registers a generic word, term or expression as a trademark suffers the consequence of others being able to use that same word, term or expression for their business so far as theirs is fair use and as long as theirs isn’t infringement.’ Suppose some giant publishing company succeeds in copyrighting a name such as Himalayan Books. The first keyword is Himalayan but they neither created nor own the Himalayas. The second key word is Books and they neither created nor own the term Books. As such, for one, they cannot prevent others from using the name Himalayan Books. For another, the Himalayas are not a place specific to Books and Books is not a product specific to Himalayas. But had they registered a name such as Chaudhuri’s Himalayan Books, it would be having a third keyword specific to a person, organization or establishment and they still would have had a claim. So they won’t be able to prevent another Himalayan Books Nepal, Himalayan Books New York or Himalayan Books Calcutta from functioning. 

Two eminent lawyers fighting for and against a geographic domain name.

One fine example of two eminent lawyers fighting for and against a geographic domain name was the Minnesota Lawyer magazine owned by the Dolan Publishing Company fighting against a Minnesota lawyer Aaron Hall, sending him a cease and desist letter to stop using his Minnesota Lawyer Dot Com website and domain name. They asked him to cease ‘use of ‘Minnesota Lawyer’ in connection with online or printed publications in the legal field and refrain from publishing legal articles and information on Minnesota Lawyer Dot Com. They expressed their concern as: ‘Your use of ‘Minnesota Lawyer’ in this manner creates the false appearance of an association, affiliation or connection between you and your activities and Dolan, the Minnesota Lawyer trademark and Dolan’s goods and services. Dolan is concerned that such use is likely to cause confusion, cause mistake, and/or deceive consumers into believing that Dolan sponsors, endorses, supports or is otherwise affiliated with you and your activities’. 

Aaron Hall himself was an attorney experienced in trademark and internet law and blog law and a domainer who owned more than 400 domains. His articles on Blog-Law/Copyright/Trademark are noted and unique in the field. He responded that ‘Dolan does not that have a monopoly on the words ‘Minnesota lawyer’, his use of ‘Minnesota Lawyer’ was merely descriptive of his location and profession, and every lawyer in Minnesota can lawfully use those terms in the title of their website or domain name’. 

‘This is about the rights of small website owners.’

Summing up his observations on this and other past experiences, Mr. Hall stated that this is a national problem. ‘This is about the rights of small website owners. This situation exemplifies the threat to website owners (across the United States). Often small website owners give up their website after being intimidated and threatened by large corporations. I have represented many small business owners in disputes over a website with a generic or descriptive name. Many small business owners don’t know what to do when they get a cease and desist letter, so unfortunately, they make a mistake like giving up the website or selling it for below market rates. The law is often unclear in this area, especially when it comes to new technologies like the Internet and domain names. This case could set an important precedence for small website owners facing similar threats. 

(The Aaron Hall case was reported in detail on 27 October 2011 by Mr. Elliot Silver in his website Domain Investing Dot Com under the title ‘Can You Trademark a Geographic Domain Name?’) 

So the culprits in this crime were traders, who acted through their government represented in the World Trade Organization. 

‘How times are altered, trade’s unfeeling train,
Usurps the land and disposes the swain.’

It was Oliver Goldsmith who wrote this in his Deserted Village. How apt!

The Sun Valley case was a warning to businesses trademarking geographical names and social media service providers jumping to protect the supposed ‘owner’s intellectual property claims.

Amazon’s attempts to register that name as a domain became successful only after a mega battle because Amazon is a geographical region. Another attempt to register the US city Boston as Boston Strong failed. The US Patent and Trademark Office asserted that ‘Boston Strong rightfully belongs in the public domain’. 

Another attempt to threaten the people of the Sun Valley town in Idaho in US by a trademark owner Sun Valley Resort and the social media owner Twitter to adamantly support and protect this resort’s anti-people claims ended in not only litigation and shame but in all people of the valley widely beginning to use the native sun sign, eventually diluting that trademark. Can a trademark owner who goes beyond bounds to trademark a town’s name fight a whole town? (The case was Leonard Barshack against Twitter and Sun Valley Company filed in Federal District Court in Idaho). 

The Sun Valley case was a warning not only to businesses trying to trademark geographical names that there will be challengers and they will not be the sole users, but also to social media service providers who take it for granted that the first-come owns a geographical name and take action against others based on the supposed ‘owner’s intellectual property claims. 

It is better to stay away from geographical names while registering goods and services.

Place names are generally not given registration. People and companies who use place names in their copyrights and trademarks will have to spend a lot of time and money and man hours to keep that name to themselves in a world where other people are acutely aware of the common ownership of place names and conscious of a few obtaining such names illegally and through grafts. It is better to stay away from such names while registering goods and services. The officials who register such names are perfectly aware that by registering them they are giving their owners unfair advantages over competitors from that area or region and they justify this unlawfulness by accepting more money for a place name. 

Place names are geographically descriptive terms (primary meaning) which are not subject to trademark protection unless it takes on a new meaning (secondary meaning) by identifying goods so closely associated with that particular source. Geographical indicators are as commercially influential tools in market as trademarks as they identify a reputable source and guarantee quality of the good. For example, Darjeeling Tea, Aaaranmula Mirrors, Thanjavur Silk. For that it should be proved that by using that place name it would indicate that the good ‘originates in that place and ‘a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin’ there. 

What right has puny human beings to make names coined by endless generations theirs?

Geographical names not only pinpoint the location of a place and distinguish one part of the earth’s surface from another; they also point to a particular civilization, culture and politics. And they also change with time, language, people and politics. The old Salisbury is now Harare in Zimbabwe. Moscow which was once St. Petersburg later became Leningrad under communist rule and was then reverted when communism collapsed. Madras became Chennai, Bombay became Mumbai and Calcutta became Kolkotta. In southernmost India Trivandrum became Thrivananthapuram, Calicut became Kozhikkodu, Thrichur became Thrissur, Alleppey became Alappuzha and Cochin became Kochi. Which one is the trade marker copyrighting, and in which language? Himalaya has a dozen names with a dozen peoples in a dozen countries. By copyrighting Himalayas, will they be copyrighting all? So, the only answer is, only a phonetic compilation can be copyrighted by anyone, at a time. If someone comes with a Chennai Rubber Factory, what will the famous Madras Rubber Factory manufacturing the MRF tyres do? Sue him and own Chennai also, claiming once copyrighted, all phonetic and other variations in all languages and all times and all countries are copyrighted? What will they who copyrighted Venice and Prague do when others come with Venezia in Italian and Praha in Czech? Did they copyright those too? Are such variations also covered in copyright, anticipating linguistic and political changes in advance? Or does the old city and mountains and river move to the new city, mountain and river with all those thousands of copyrights? What absurdity is that! Remember that they all are the same geographical indications. These names were all coined by endless generations through countless centuries. What right has puny little human creatures have to make them theirs, whose births were not even dreamed about when these beautiful names were being formed? 

But, still, your application for registration of a place name, i.e., a geographical indicator, may be considered for registration, if there is a specific reason for, the goods being (1) either qualified for a Geographical Index protection, or (2) such place name is completely arbitrary and will not cause confusion or unfair competition or (3) it is proved a reputation was built on by using that name for years ‘without there being any evidence of harm to competitors’. 

The names India, Congo and Seattle were trademarked but the people of these places did not know.

If you try to copyright a name like Ceylon Café in Ceylon, you will not succeed because it is not far enough from the place to no longer be truly descriptive. But if you try registering Ceylon Café in India or Malaysia, you may succeed based on your argument that Ceylon is far from Malaysia to be descriptive of Ceylon and is just a non-descriptive word in Malaysia. Truly descriptive words won’t be copyrighted. Trademarks can't be descriptive. In Ceylon that word is a common descriptive word used by so many people including competitors the trade marking of which would be denying those competitors the right to use that word to describe their own products or services. If one café or restaurant in Ceylon wants to use that name, others too would want the same. If that name is trade marked, others using that common name would become infringement of a trademark. Denying everyone that right except to one is not permissible. 

Can the name ‘India’ be trademarked? Not in India but a beer company in Puerto Rica owns that name. The word Seattle is owned by many. A Georgian sports company owns Congo but the people of the Congo Republic would never have even heard about Georgia. 

If trade markers and copyrighters are not satisfied with land and ocean names, there are planetary names!

There are national and international organizations which maintain databases of populated places and noted features of the world countries. They maintain their databases available online for anyone to search. The most famous international organization is the United States Board on Geographic Names that maintains the worldwide Geographic Names Data Base which keeps names excluding those in the United States of America and the Antarctic Continent. The most noted national databases are the Database of Place Names in Australia by the Committee for Geographical Names in Australasia, the Official Geographical Names Database of Brazil, the Geographical Names Board of Canada, the China Geographical Names Website by the China Institute of Toponymy, Place Names Board of Estonia, the Topographic Map Browsing System by the National Land Survey of Finland, Geographical Names Work in France at the Institut Géographique National, the Federal Agency for Cartography and Geodesy website, Germany, the Village Finder and Gazetteer of Hungary, the National Geographical Names Database by the Iranian National Committee on the Standardization of Geographical Names, the Toponymic Gazetteer by the Japanese Geographical Survey Institute, List of Lithuanian Place Names by the State Commission, the Gazetteer of Towns and Villages of Luxembourg by the Luxembourg Society for Linguistic, Ethnological and Dialectic Studies, New Zealand Geographic Place Names Database, the Gazetteer of Korea, Standardization of Geographical Names in Slovakia by the Geodesy, Cartography and Cadastre Authority of the Slovak Republic, the Slovene Governmental Commission for the Standardization of Geographical Names in Slovenia, the South African Geographical Names Council, the Land Survey Place-Name Database in the National Atlas of Sweden, the Swiss Topomaps and Place Names by the Federal Office of Topography of Switzerland and the US Geological Survey’s Geographic Names' US Database. In addition to these land-based databases, there is also the official database of the Sub-Committee on Undersea Feature Names of the International Hydrographic Organization which lists undersea and maritime features. And if you do not find a suitable name to trademark or copyright among the unending land and undersea and maritime names, go to the List of Planetary Names maintained by the International Astronomical Union. 

What trademarks can be and cannot be.

*Trade marks (TM) are registered brand names, ‘a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others’, as the US Patent and Trademarks Office defines it. Service marks (SM) identify services rather than products. 

*A trademark should not correspond to the geographical origin of the products irrespective of the reputation of the location concerned so that it is not descriptive. ‘That place name should remain available to all merchants who carry on or could carry on business in the sector and the region concerned’. 

*A trademark should not deceive the general public on the origin of the product and ‘let one think that it, the trademark, represents an official authority’. 

*A trademark should not be or recall an origin name. Registered designations of origin designate basic products which are manufactured, produced and processed in the same geographic area, like champagne, wine, etc. Protected designations of origin (AOPs or AOCs) are indications used to distinguish products for which one of the preparation stages, but not all, took place in a specific geographic area. 

*But if the designated products are eligible to use AOCs, registration of words as part of a trademark may be considered but only very rarely. 


Copyrights, Diluting Trademarks, Domain disputes, Geographical Indicators, Infringing Intellectual Property Rights, Place Name Data Bases, Registering Goods And Services, Small Website Owners,

This article is part of the soon-to-be-released book,
How writers’ rights are violated everyday

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