Wallace, Rachel

English

California Western School of Law

CALIFORNIA WESTERNINTERNATIONAL LAW JOURNALtVOLUME 43 FALL 2012 NUMBER 1FOREWORD TO THE UNITED STATES PATENT ANDTRADEMARK OFFICE SYMPOSIUM ON TRENDS INALTERNATIVE DISPUTE RESOLUTION CONCERNINGINTELLECTUAL PROPERTY RIGHTS LITIGATIONRACHEL WALLACE*The Greek philosopher and scholar, Plato, was the first to notethat necessity is the "mother of invention." There is certainly muchtruth to that insightful observation by Plato. However-withoutwanting to contradict one of the most influential contributors to theevolution of modem philosophy and science-I must humbly pointout that Plato perhaps committed an error of omission. He forgot topoint out that invention actually requires two parents. Besidesnecessity, there must also be a spark of ingenuity.This journal, and the study upon which it is based, represent bothof these qualities. It will come as no surprise to any of the readers ofthis journal that intellectual property (IP) is an incredibly important,albeit highly technical, complex field of law. The stakes are high andt California Western School of Law gratefully acknowledges the UnitedStates Patent and Trademark Office, which initiated and supported the explorationsthat appear in this volume and in the Symposium on which it is based, Trends inAlternative Dispute Resolution Concerning Intellectual Property Rights Litigation.* Rachel Wallace is the Director of the Global Intellectual Property Academyat the United States Patent and Trademark Office. The views expressed in thisforeword are personal observations of the author and do not reflect the officialposition of the U.S. government.11Wallace: Foreword to the United States Patent and Trademark Office SymposiPublished by CWSL Scholarly Commons, 20122 CALIFORNIA WESTERN INTERNATIONAL LAW JOURNAL [Vol. 43the battles over who owns what and how much it is worth can be time-consuming and bitter. It was in this context, aware of the need forcreative approaches to handling such battles, that California WesternSchool of Law approached the United States Patent and TrademarkOffice in early 2011 and proposed that the two entities undertake ajoint study on the use of alternative dispute resolution (ADR) in IPlitigation. With the increasing costs of litigation and proliferation ofdomestic, multilateral, and online forms of ADR, the objective was toprovide the most up-to-date picture possible of the application of ADRtools to IP disputes and to encourage their development in this field.In furtherance of that goal, on March 8-9, 2012, CaliforniaWestern School of Law hosted a symposium on ADR trends in IPlitigation. The symposium drew distinguished speakers from thepublic and private sector, as well as from the United States andabroad. The school itself provided two of those esteemed presenters.The first of these, Professor Thomas Barton, expertly framed thediscussion, and pointed out that ADR in IP disputes tends to beviewed through the prism of enforcement. Traditional enforcementmechanisms are capable of disposing of disputes accurately and fairly,but they can also be expensive and unpredictable. ADR, meanwhile,can provide resolution while reducing the acrimony that often plays aprominent role in litigation.There is no "one size fits all" approach, as Professor Bartonexplained and as is demonstrated by the results of the study and theexcellent contributions to this journal. Culture, experience, the stateof development of a country/region's IP laws, and other factors caninfluence how popular a particular tool of dispute resolution is withpeople and businesses. Ultimately, the most effective disputeresolution systems provide multiple alternatives, alternatives that arenot mutually exclusive.The second invaluable contribution from California WesternSchool of Law came from Professor James Cooper. Professor Cooperdiscussed the approach taken in an area of much interest and activityin recent years-free trade agreements (FTAs). In particular,Professor Cooper spoke about the historic development of the NorthAmerican Free Trade Agreement and the inclusion and use of disputeresolution mechanisms in that trade agreement and in the bilateral andmultilateral FTAs that followed.2California Western International Law Journal, Vol. 43, No. 1 [2012], Art. 2https://scholarlycommons.law.cwsl.edu/cwilj/vol43/iss1/2FOREWORDThe other presenters at the symposium-the same distinguishedgroup of contributors to this journal-introduced the methods of ADRavailable in other countries and regions. Their contributions to thisjournal reflect those discussions. One presenter discussed thedeveloping practice of ADR in IP disputes in Brazil, where ADR has arelatively recent but rich history. For instance, late in 2011, a newproceeding was implemented to resolve disputes over domain names.This provides Brazilians an opportunity to access dispute resolution inPortuguese. In addition, Brazil has a unique Advertising Self-Regulation Code, which allows for resolution of IP-related advertisingdisputes through a type of peer review/determination process.Nevertheless, the practice of mediation is viewed with suspicion inBrazil. There is a fear that mediation could expose weaknesses in aparty's position before litigation.In contrast, in Canada, mediation is used in nearly every IP case.Courts offer a full range of ADR options, but-aside frommediation-other forms of ADR are rarely used. Even mediation isoccasionally avoided out of fear that it would create an appearance of"making deals" with competitors and putting companies in violationof anti-trust laws.MERCOSUR, sometimes referred to as the "Common Market ofthe South," was established in 1991 by Brazil, Argentina, Paraguay,and Uruguay under the Treaty of Asunci6n to create a free trade areaamong its members.' MERCOSUR members have available to themthe ability to arbitrate commercial disputes; however, arbitration andmediation are rarely used for IP disputes. More frequently, rightsholders turn to the courts, where they can obtain tougher and possiblymore immediate remedies.Islamic law provides its own unique perspective on IP, where IP isnot included within the classical definition of "property" and was,historically, seen to be a public good. Despite this historic view,Islamic law has been interpreted to offer protection for IP; and manycountries with Islamic legal systems have robust statutes in place forIP protection. One might expect a significant role for ADR incountries based on Islamic law. As you will read, the reality is quite1. It was hoped that MERCOSUR would serve as a stepping stone toward fulleconomic integration among all of the South American states. Internal disputes,increasingly protectionist behavior by the trading bloc, and controversy overVenezuela's role within the bloc have made MERCOSUR's future uncertain.32012]3Wallace: Foreword to the United States Patent and Trademark Office SymposiPublished by CWSL Scholarly Commons, 20124 CALIFORNIA WESTERN INTERNATIONAL LAW JOURNAL [Vol. 43different. In the example of Jordan, new mediation laws were passedin 2006, but there continues to be a need for greater experience withthis tool.In parts of East Asia, as in the countries based on Islamic law, onewould expect a widespread use of ADR tools, particularly given thecommunity-based approach to resolving disputes in those regions.There are highly developed ADR systems in place in East Asia. Yet,those systems tend to be underutilized. In Asia generally, Singaporeis an exception, boasting several arbitration and mediation centers(including the only World Intellectual Property OrganizationArbitration and Mediation Center outside of Switzerland). However,in places like Japan and Korea, where there is significant trust inpublic institutions and ready access to funds to finance litigation,traditional avenues for resolving disputes are much more common. Ifanything, ADR tends to be viewed in these places not as analternative, but as a complement to litigation.As with many East Asian countries, the European Union (EU)members have a number of well-developed options for ADR availableto them. In fact, the EU has taken recent steps to promote the use ofADR in IP cases. For example, the Office for Harmonization in theInternal Market, the branch of the EU regulating trademarks anddesigns, decided, in April 2011, to establish a cost-free mediationsystem to run parallel to appeal proceedings.In every region of the world, ADR tools are increasingly availablefor use in handling IP disputes. The challenge is building awarenessabout them and their tremendous potential and overcoming persistentconcerns and fears about their capacity to bring needed resolution.This journal will help in this endeavor.4California Western International Law Journal, Vol. 43, No. 1 [2012], Art. 2https://scholarlycommons.law.cwsl.edu/cwilj/vol43/iss1/2

Foreword to the United States Patent and Trademark Office Symposium on Trends in Alternative Dispute Resolution Concerning Intellectual Property Rights Litigation

https://scholarlycommons.law.cwsl.edu/cgi/viewcontent.cgi?article=1022&context=cwilj

Foreword to the United States Patent and Trademark Office Symposium on Trends in Alternative Dispute Resolution Concerning Intellectual Property Rights Litigation

Abstract

Similar works

Full text

Available Versions

California Western School of Law