Electronic copy available at: http://ssrn.com/abstract=1568188

European Intellectual Property Review2009

The intellectual properties of geographyDwijen Rangnekar

Subject: Intellectual property. Other related subjects: International lawKeywords: Geographical indications; Intellectual property; International law

*E.I.P.R. 537 Introduction

Geographical indications (GIs) are a relatively recent entrant into the growing pantheon of globalintellectual property rights (IPRs), though its antecedents can be traced to other intellectual property(IP) instruments, like Indications of Source and Appellations of Origin, and conventions and customs,like guilds-organising traders. In contrast to other areas of IP, GIs at the World Trade Organisation(WTO) are different. To begin with, they entertain an entirely different constellation of interests withdemandeurs for stronger protection emerging from the Global South. Moreover, we also witnessintra-Quad disagreement. All this makes for reticence in the Trade-Related Aspects of IntellectualProperty Rights (TRIPS) Agreement, as it raises only an obligation for legal means for protectionwithout prescriptions on the means, thus, the proliferation of various legal means to protect GIs. Doesthis suggest otherwise about the entry of GIs into the IP-pantheon? Are GIs any less of IP? Animmediate answer would point to GIs inclusion as a category of IP in TRIPS (art.1.2).1 In an Opinionin this journal, Stephen Stern2 suggests otherwise calling GIs a form of IP, and dealing with GIs in IPtreaties, does not make GIs a form of IP. Using his article as a point of reference and departure, I callfor a critical GI scholarship that also recognises the idiosyncratic features of its logic and construction.

Let me begin by narrating Stern's thesis. Finding no definition for IP in various multilateral IP treaties,which only lists instruments of IP, Stern settles on the common denominator of involvement ofintellectual input3 as the litmus test for IP. With respect to GIs, he sees no intellectual processinvolved, nothing is conceived and no originality or creation involved.4 For that matter, he is alsodismissive of the names of GIs The geographical name inevitably pre-existed the product thatsubsequently became known by that name..5 He advises against falling for the seduction of labellingGIs as IPRs6 and that while having propertylike characteristics, are not in fact property as theycannot be sold or licensed.

Like Stern, I am puzzled by the absence of any definition of IP in the multilateral treaties and theresort to a sleight of hand in listing instruments. A first step towards a definition is to followphilosophers who advise delineating between intellectual objects which constitute the subject matterof ownership and ownership which is effected through institutions (copyright, patents, trade marksand customs and conventions).7 Meanings ascribed to these terms are historically contingent andreflective of our normative considerations about what things ought to be.8 These differences arefurther explicated by adopting a Hohfeld-Honor bundle of rights metaphor which sees property asa complex aggregate of rights (or claims), privileges, powers and immunities9 ; thus, taking us to anidea of regimes of property and thereby defeating any suggestion of a singular notion of property.There are nuances to this idea of regimes of property. For instance, consider the popularrepresentation of commons by economists, the peasant may use the open commons as pasture forhis sheep; he may not prevent others from doing the same.10 This construction suggests a regimewhere no one has the right to exclude others (i.e. res nullius ); however, this representation of thecommons miserably fails to capture the spectrum of reality which also includes regimes, such ascommon pool resources that are collectively managed *E.I.P.R. 538 by members of a groupthrough shared contracts, social custom and convention.11

In focusing on the intellectual object of GIs, the suggestion would be to part ways with thephilosophers and instead join company with anthropologists, geographers and cultural theorists. Forinstance, Ploeg uses the expression of art de la localit to capture the cultural stabilisation ofparticular practices:

[E]very location acquired, maintained and enlargened its own cultural repertoire: its own normsand criteria that together established the local notion of good farming.12

Page1

Electronic copy available at: http://ssrn.com/abstract=1568188

In a study on carpets, Brian Spooner tells us how closely related peoples come to work with closelyresembling designs and that this merging of identities of peoples and motifs is preferably appreciatedin genealogical and tribal terms.13 Societies curate their surroundings and actively engage in thecreative generation of their habitat and the various artefacts that co-constitute their surroundings. Thislocalised specialisation is apparent in a number of products and is seen to increase at lower levels ofaggregation: for example, despite widespread distribution (internationally and within nations) of thespecies Vitis vinifera, the major production areas are highly localised with each grape varietyacquiring its own distinctive geographic pattern.14 These distinctive geographic patterns aren'tillusionary as quality characteristics are associated with habitat and local practices. An examination ofBasmati varieties that included traditional cultivars from India and Pakistan and the varieties bred byRiceTec, an American seed company making dubious claims of Basmati-like properties, found thatthe latter failed to exhibit either the genetic structure of Basmati or the full range of agronomicattributes.15 In this vein, GIs are the juridical reification of these localised specialisations and normsof good farming.

No doubt, appreciation of this creativity and recognition of this localised specialisation is culturallymediated. Reckoning with the subjectivities of cultures remains problematic, hence the continuingintra-Quad disagreement on GIs. For that matter, popular narratives on GIs are adequate testimony toculturally situated readings of GIs. But, are the standards of GIs really all that bad? Here, I findresonance with copyright and its requirements for originality. Consider the increasing proliferation ofworks and the ease with which certain types of works, in particular compilation of data and lists, cannow be produced. In Feist Publications Inc v Rural Telephone Service Co Inc, it was stated that:

originality is not a stringent standard; it does not require that facts be presented in an innovative orsurprising way. It is equally true, however, that the selection and arrangement of facts cannot bemechanical or routine as to require no creativity whatsoever. The standard of originality is low, but itdoes exist.16

A similar logic could be discerned in the functioning of GI laws where standards exist even if somemay consider them to be low. Of relevance is genericity as a defence against the inclusion ofparticular subject matter as a property right. Consider the fact that West Country FarmhouseCheddar is a Protected Designation of Origin while the term cheddar remains a generic term andavailable for and used by a retinue of cheese-makers.

It is with Stern's dismissal of the nature of the property right in GI where my proposed reading of GIhas further significance. There should be little disagreement that GIs are not private property in asense similar to other IPRs: they cannot be bought, sold, or transferred.17 Even in jurisdictions with asui generis legislation, the scope of protection does not include the right to assign an indication--aright that exists for trade marks (art.20) and patents (art.28.2) within the TRIPS Agreement. Quitesimply, transferring and/or licensing a GI defeats the fundamental premise of a GI which requires theproduct to originate in a particular geography. Consider the predicament confronting NewcastleBrown Ale when closing its landmark Tyne brewery after more than 100 years of operation to moveelsewhere. Recognising that this move to another site meant that the specification is not any longerrespected in relation to the delimited geographical area originally stipulated that it surrendered their*E.I.P.R. 539 protected GI.18 How do we understand these predicaments--particularly in today'stransglobal world of time-space compression and infinite mobility? Here, recall that the subject matterof GIs are predicated on establishing locational specificity; thus, the law responds by constructinglocational immobility into the rights in GIs. This, I suggest, is a structural logic of GIs which results inthe obvious absence of a right to license.

But, GIs are not empty of rights as they are endowed with a right to exclude. This right to exclude hasbeen asserted on numerous occasions in a variety of jurisdictions across a range of different GIs. Itmatters little if the legal means to assert this right emerges out of laws on business practice orconsumer protection or through institutions of sui generis systems or trade mark systems. Considercase law at the European Court of Justice that concerned the grating of Grana Padano cheese19 andthe slicing and packing of Parma ham.20 While these procedures occur closer to the retail end theyare stipulated in the specifications submitted for registration under Regulation 510/2006.21 The Courthad to decide whether they constitute an exclusive right that is also directly enforceable. In bothinstances, the Court agreed that the rules are an exclusive right that is also enforceable. Morespecifically, it concluded that specifications:

determines both the extent of the obligations to be complied with for the purposes of using thePDO [i.e. Protected Designation of Origin] and, as a corollary, the extent of the right protected against

Page2

third parties by the effect of registration of the PDO.22

This clarifies that GIs are endowed with a right to exclude, and, as some would argue, establishes thefoundation for the edifice of property to preside upon:

the power to exclude certain competitors, just as any residential tenant holds the right of quietenjoyment even if she is barred from subletting or assigning her lease. The power to exclude is thepower of property.23

What is possibly more fascinating, and less noted, in the literature on GIs is the inherent dualitybetween obligation and prohibition; thus, establishing the basis for club-like rights. The specificationsthemselves, as explained earlier, are the juridical reification of the norms of good farming. For thosewho adhere to the norms, the right to use the GI exists, whereas those not abiding by these normsare prohibited from using the GI. It is in this duality that GIs become a club, so to speak. And, byextension, less of a private property right and more like what Carol Rose in a different context termedlimited common property as property held as commons amongst the member of a group, butexclusively vis--vis the outside world.24

GIs do speak of certain traditions of invention and that these traditions themselves constitute acompelling normative justification for recognition and right. In appreciating and acknowledging thesetraditions of inventions, lets us not idealise them entirely. There will be, in some of these GIs, inventedtraditions.

Dwijen Rangnekar is a Research Councils UK Academic Fellow and Assistant Professor of Law jointlyat the School of Law and the Centre for the Study of Globalisation and Regionalisation, WarwickUniversity, UK. He is currently researching Geographical Indications (GIs) under an Economic andSocial Research Council-funded project (RES-061-23-0119), details can be found athttp://www.warwick.ac.uk/go/feni [Accessed August 17, 2009]. He is also writing a monograph onplant breeders' rights.

E.I.P.R. 2009, 31(11), 537-539

1. Amy P. Cotton, 123 years at the negotiating table and still no dessert? The case in support of TRIPS geographical indication protections(2007) 82 Chicago-Kent Law Review 1295, 1309 adopts this as part of a larger argument on the intellectual property (IP) status of GIs.

2. Stephen Stern, Are GIs IP? [2007] 29 E.I.P.R. 39; although with no reference to Amy Cotton's work.3. Stern, Are GIs IP? [2007] 29 E.I.P.R. 39.4. Stern, Are GIs IP? [2007] 29 E.I.P.R. 39, 40.5. Stern, Are GIs IP? [2007] 29 E.I.P.R. 39, 39-40. This short article is not the place to do any justice to the complicated relationship

between things and names. Suffice to say that there are numerous examples of potential and actual GIs where the name is entirelycreative--and only confining myself to India, I identify the following: Basmati (for rice), Pashmina (for shawls) and Aranmula Kannadi (formirrors).

6. Stern, Are GIs IP? [2007] 29 E.I.P.R. 39, 41.7. E. Hettinger, Justifying Intellectual Property (1989) 18 Philosophy and Public Affairs 31.8. C.B. Macpherson, Property: Mainstream and Critical positions (Blackwell and University of Toronto Press, 1978); see especially

Macpherson's Introduction.

9. This approach can be and has been criticised for adopting a narrow legal matrix and also for glossing over the wider context of obligationand responsibility with respect to rights, see M.A. Heller, The tragedy of the anticommons: Property in the transition from Marx tomarkets (1998) 111 Harvard Law Review 621.

10. J.M. Bchanan and Y.J. Yoon, Symmetric tragedies: Commons and anticommons (2000) 43 Journal of Law & Economics 1, 3.11. Elinor Ostrom, Governing the Commons: The Evolution of Institutions for Collective Action (Cambridge University Press, 1990).12. J.D. Van der Ploeg, The Reconstitution of Locality: Technology and Labour in Modern Agriculture in Terry K. Marsden et al. (eds),

Labour and Locality: Uneven Development and the Rural Labour Process (D. Fulton Publishers, 1992).13. Brian Spooner, Weavers and Dealers: The Authenticity of an Oriental Carpet in Arjun Appadurai (ed.), The Social Life of Things:

Commodities in Cultural Perspective (Cambridge University Press, 1986).14. W. Moran, Rural Space as Intellectual Property (1993) 12 Political Geography 263.15. P. Bhattacharjee et al., Basmati rice: a review (2002) 37 International Journal of Food Science and Technology 1; and S. Kamath et al.,

Basmati rice: its characteristics and identification (2008) 88 Journal of the Science of Food and Agriculture 1821.16. Feist Publications Inc v Rural Telephone Service Co Inc 449 U.S. 340 (1991) at 53. This approach was restated in very similar terms in

Tele-Direct (Publications) Inc v American Business Information Inc (1997) 76 C.P.R. (3d) 296.17. To an extent, comparing intellectual objects in terms of either their standards of protection or the rights granted therein is a facile and

futile debate, particularly if it is driven by using one or the other as a standard.

Page3

18. Regulation 952/2007 cancelling a registration of a name in the Register of protected designations of origin and protected geographicalindications (Newcastle Brown Ale (PGI)) [2007] OJ L210/26.

19. Ravil Sarl v Bellon Import Sarl (C-469/00) [2003] E.C.R. I-5053.20. Consorzio del Prosciutto di Parma v Asda Stores Ltd (C-108/01) [2003] E.C.R. I-5121 at [33].21. Council Regulation 510/2006 on the protection of geographical indications and designations of origin for agricultural products and

foodstuffs, [2006] OJ L93/12.22. Ravil Sarl v Bellon Import Sarl [2003] E.C.R. I-5053 at [80].23. Jim Chen, A sober second look at appellations of origin: how the United States will crash France's wine and cheese party (1996) 5

Minnesota Journal of Global Trade 29, 39.

24. C.M. Rose, The several futures of property: Of cyberspace and folk tales, emission trades and ecosystems (1998) 83 Minnesota LawReview 129, 132.

2009 Sweet & Maxwell and its Contributors

Page4