If You Can’t Beat Them, Join Them: Breaking Down the Walls of IP Law Practice

If You Can’t Beat Them, Join Them: Breaking Down the Walls of IP Law Practice

Going to another jurisdiction as a foreign-trained lawyer may seem daunting. It is not only about immersing oneself in a different culture, eating local foods, and visiting historical landmarks. This is certainly a bonus—we all love some “croquetas” in Spain or a skyline view of Manhattan—but this is not the catalyst that makes foreign-trained lawyers want to cross their jurisdictional borders. It is about circumventing an inefficiency that is lingering in legal systems across the world: the deglobalized nature of law in a globalized world. But what does that actually mean?

To simplify, let’s start with the two biggest categories of legal systems, common law and civil law systems. Whereas common law systems are primarily based on uncodified, precedential rules,^[1] civil law systems rely heavily, and almost exclusively, on their codified legislation.^[2] This distinction is also seen in how lawyers are educated, how they assess a legal issue, and, ultimately, how they practice. In practice, this means that legal issues are handled differently in different jurisdictions, and cross-jurisdictional matters can become highly complex. Unfortunately, despite globalization being a buzzword around the globe, little is done to address these differences.

Intellectual property law is one of the areas of the law that, in practice, is primarily cross-jurisdictional, but, in theory, domestic rules still govern. The reason for this can be boiled down to how policymakers consider IP rights. As an example, the U.S. provides IP protection as a means to incentivize creation and inventions that will be valued by society.^[3] On the other hand, countries in Europe take the perspective that any person must also have moral rights over their creations and inventions because their creations reflect their personality.^[4]

Attempts have been made to bridge the gap between jurisdictions and how IP matters are dealt with; it is one of the main reasons why international IP treaties were created. The Paris Convention^[5] and the Madrid Protocol^[6] were created to ensure protection of inventions and creative works in different countries. But these are merely tools that aid in the process of obtaining intellectual or industrial property protection overseas. The treaties have not, however, modified legal systems and we must still apply national laws. Inevitably, this national approach to international IP issues poses evident problems—the walls of IP law practice.

Many examples come to mind. We all know Michael Jordan as one of the greatest basketball players the world has seen.^[7] He may have been on offense countless times on the basketball court, but he has certainly been on defense in the courts. Michael Jordan and Nike engaged in a business partnership in 1984^[8] through which they created the famous “Air Jordans.”^[9] Naturally, Nike applied to register the mark “Air Jordans,” and shortly after obtained the registration for Class 25, including footwear and athletic clothing.^[10] Within the first year, Nike sold $125 million.^[11] Needless to say, the shoes were popular.

Years later, in 2007, came Qiaodan Sports Co., Ltd., a Chinese shoe company, who applied for trademark registrations in China using the Chinese characters for “Jordan.” (乔丹 and Qiaodan). Michael Jordan has since filed around 80 lawsuits against the company,^[12] largely alleging unauthorized use of trademarks with the intention of misleading consumers.^[13] The Chinese Courts have held that, although Michael Jordan’s reputation was widely cherished by the Chinese,  Qiaodan Sports did violate Michael Jordan’s name, but they have not completely barred the company from using the “Qiaodan” trademark.^[14] The silver lining with this case is that a person seeking to do business in another country, who heavily relies on their registered mark, needs to ensure that all their bases are covered in the jurisdictions of interest. Meaning, had Nike and Michael Jordan’s teams anticipated that China could register the Chinese characters for “Jordan,” or that people would associate “Qiaodan” to the Chinese characters, ergo Jordan, they may have been able to save themselves many legal battles. In China, unlike in the U.S., proof of use and trademark maintenance is not required. Although this enables trademark squatters in China to register foreign marks as their own without the intention to use it in commerce, it also provides a safe avenue for foreign trademark owners to protect their mark.^[15] Learning about cases like this as a lawyer will allow for more suitable counseling; foreign-trained lawyers should be prepared for this.

Another example that is interesting to bring up relates to products that we consume daily. Let’s take Pink Lady Apples, for instance. One could be completely foreign to the term “malus domestica Borkh” but could immediately envision a pinkish apple when hearing the mark “Pink Lady.” They are the same thing: one is the technical term (the variety name) and the other is the trademark.^[16]  Since we have already discussed a trademark example, we will leave “Pink Lady” aside and instead focus on “malus domestica Borkh.” “Malus domestica Borkh” is a plant variety that was developed in Australia in 1973 as a result of cross-breading “Lady Williams” and “Golden Delicious” apples.^[17] From that, the “Pink Lady” apple that we love came to be.

In the United States, there are different IP protections that can be obtained over plant varieties: plant patents, utility patents, and plant variety protections.^[18] By contrast, in other countries, such as those within the European Union, patents over plant varieties are strictly prohibited.^[19] Instead, one can only seek protection through “plant variety protections.”^[20] Merely knowing this distinction can immediately increase client counseling efficiency. Moreso, being a licensed lawyer in two jurisdictions can help not only in the registration process, but also in advising how to best manage the IP rights in international business transactions.

The two examples have been oversimplified, but the message to get across is that if legal systems are not tweaked to better regulate international legal practice, legal practitioners must make it their mission to get, at least, familiar with different systems and practices. In practice, many ambitious IP attorneys have been seeking international partnerships and network or foreign legal education. In other words, IP lawyers are internationalizing their knowledge to meet the growing demands of a globalized world in the grips of national legal systems. As they say: “if you can’t beat them, join them.” So, if lawyers have not considered this yet, it is something worth considering.