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Raffi Melkonian [*]

The History and Future of Geographical Indications in Europe and the United States

Raffi Melkonian

Class of 2005

This paper is submitted in satisfaction of the Food and Drug course requirement

Abstract: Geographical indication is one of the most interesting problems in international trade law – how can we keep imitators from competing unfairly against distinctive local products? This paper traces the history of geographical indication protection for food products through French, American, and European history, attempting to show that current disagreements on the substance of such protections stem from the details of regulation rather than some fundamental distinction in legal regime. Ultimately, I recommend a negotiated solution to the current standoff between the world’s two most important trading power, which I believe to be possible without serious deviation from either European or American precedent

I. Introduction
1
II. The European Background of Geographical Protection
7
A. The Early History of Geographical Indication
7
B. The Development of Modern European Geographical Indication
10
1. The First Fraud Regulation
10
2. The Midi Wine Revolt of 1907
12
3. The First AOC laws come into effect
17
C. European protections of Geographical Indication
21
III. The History of Geographical Protection in the United States
24
A. The Common law attempts to protect geographical indication
24
B. The Earliest Efforts to Protect Geographical Indication
26
C. The 1902 Act
30
D. Geographical Indication Is Integrated into the 1906 Act
34
E. The Time of Trademark
35
F. The wave of State Statutes and the Regional Integration of PGI into US law
36
IV. The International History of Geographical Indication: a story of debate and conflict
40
A. Why are European negotiators not satisfied with current United States law?
47
B. The US Legal Response
53
V. The Way Forward: A Conclusion
55
Annex A: The Long March of the Melton Mowbray
61
Annex B: Protected Geographical Indication at the World Trade Organization
67

I. Introduction

In the summer of 2004, the High Court in London stood poised to hear fraught argument that pit the artisanal producers of Melton Mowbray Pork Pies against the industrial giant Northern Foods PLC. At issue was the snack’s application for Protected Geographical Indication (PGI) under European law, which would grant those local producers represented by the Melton Mowbray Pork Pie Association exclusive rights over the name of the dish[1] – and would incidentally destroy Northern Food’s ability to produce Melton Mowbrays in its factories across England.[2] At the last moment, Northern Foods and the government reached a settlement – England’s DEFRA would take another look at the appropriateness of the decision to grant European protection to Pork Pies, and the food giant would drop its suit. As I write today, DEFRA has decided to ignore Northern Foods’ objections and forward the pork pie’s application to European authorities.[3] At long last, the Melton Mowbray will be protected as a unique, historical, product.

Far from being an isolated footnote to contemporary history, the Melton Mowbray Pork Pie episode is a colorful example of an issue with ancient roots and modern resonances. From the very beginnings of food regulation, local producers have sought to have their market protected against what they perceive as inferior interlopers. With globalizing markets becoming more common, these issues have gained in importance. How, precisely, are countries to protect what they believe are important national products from imitation across borders? In recent times, the European Union and its constituent countries have chosen a distinctive answer to this question. By producing an internationally recognized list of quality marks, which can be used against even existing trademarks in perpetuity, European policy makers believe that they can balance the need for innovation in the food industry with the demands of their traditional producers for protection. With trade policy becoming increasingly centralized through the influence of the GATT treaty, and now the World Trade Organization (WTO), European negotiators have demanded wider implementation of what they consider a long-tested and moderate strategy. It makes sense, they say, that products protected in Europe for their distinctiveness ought to be equally protected elsewhere.

Given recent tensions between Europe and the United States, it is perhaps not surprising that the U.S government has staunchly resisted Europe’s seemingly expansive plans, refusing to negotiate any new treaties or to accept any changes to existing international trade agreements. Indeed, this argument has recently escalated into the dispute resolution mechanism of the WTO, where American and Australian representatives have maintained that their countries not only have no obligation to institute European style geographical protections, but that the Europeans have an obligation under the equal treatment provisions of GATT to protect non-European products under the same rules they protect their own. The Americans’ position, in general, is clear. Acceding to European demands to extend geographical protection for local foods will hurt American business, and stress both current American intellectual property law as well as a wide range of common law traditions. Given that America already protects European products from fraud, albeit not in the way Europe desires, such harmful changes to American law are neither desirable nor acceptable.

As this paper will argue, however, both the United States and Europe share a remarkably similar history of protecting what are generally called “geographical indications”. While the details of geographical indication differ significantly today, a deep joint history of protecting local products suggests that there is room for a satisfactory compromise which grants Europeans many of their desired protections while deviating only minimally from American precedent. The continued failure of negotiators on both sides to reach a solution, therefore, is not a fundamental one of legal regime. Rather, the debate on geographical indications is rooted in the details of regulation. By pushing for wide ranging geographical indication protections, European negotiators have put American legislators in the impossible position of stripping famous brands of their traditional names. Unsurprisingly, Americans have reacted with an uncompromising “no”. But it need not be this way, and this I hope that this paper will make that clear.

This paper proceeds as follows: Part II discusses the history of European protections for geographical indication. Part III traces American efforts historically. Part IV discusses the current debate between the United States and the European Union over geographical indication. Part V demonstrates the fundamental consistency between the two positions, and concludes. Annex A tells the full story of the Melton Mowbray Pork Pie, and Annex B expands on the recent litigation before the WTO Dispute Resolution Body, discussed briefly in Part IV.

II. The European Background of Geographical Protection

European countries have long provided their farmers and other agricultural producers with geographical protection against imitation. Though other scholars have described the current law in detail, few lawyers have examined the history of European protections for geographical indication. But without this kind of historical analysis, previous treatments of the subject have lacked important context – why did individual European states, and the European community as a whole, adopt the specific protections of geographical indication that they chose? This part first discusses the history of geographical indication before the 20th century, describes the development of the current system in France, and then describes how geographical indication was introduced on the European level.

A. The Early History of geographical indication

The overwhelming impression the impartial observer takes from most discussions of the current geographical indication controversy, in this country at least, is that the European system somehow emerged from whole cloth – designed almost intentionally to beleaguer American producers of European style foods. As the discussion below will demonstrate, however, European geographical indication law actually was forged through a slow process of pressure and reaction, as European governments tried to devise ways to protect both their consumers and small businessmen against fraud and trickery.

Given France’s unparalleled reputation for cuisine, it is not surprising to find that the process of developing geographical indications has relatively long roots in that country. [4] The influence of France in geographical indication law is so overwhelming, in fact, that the French model of “registration rights” had been adopted widely across Europe and elsewhere.[5]

There is no doubt that France began thinking about the issues inherent in geographical indication early in its august history, perhaps as early as the waning of the middle ages.[6] By the early modern period, for example, while there was no specific law on fraud or geographical indication as we understand them, it is clear that the system of monopolistic “corporations” chartered by the crown to undertake specific trades was motivated by some of the same intuitions that fuel protection today.[7] The details of enforcement in the period are sketchy, of course – but a fundamental idea of how monopoly based geographical indication might have worked is provided by a famous story told to chronicle the birth of the restaurant as an institution. As the tale goes, in the mid-18th century a Parisian innkeeper named Boulanger[8] cooked a creamy, white sauce flavored with calves’ feet instead of his usual restaurant , a thin broth like soup. This drew the ire of Paris’s guild of traiteurs , who claimed exclusive jurisdiction over the dining industry.[9] After much lower court litigation, we are told, the case was eventually presented before the Parlement de Paris , then France’s highest court. Sadly for the enterprising cook, Boulanger lost on the merits – but won in the court of public opinion, in the annals of which he is remembered as the inventor of the modern restaurant.

The best historical thinking suggests that the Boulanger story is likely to be false.[10] But we do know that such suits were possible.[11] And if your guild was granted the monopoly over the cheese brie, for instance, one can imagine without much difficulty a similar suit to keep an upstart cheesemonger from cannibalizing your business.[12]

The reason we never saw more developed geographical indication in the 18th century, however, or under Napoleon, is a relatively simple side effect of technological development. While some products could certainly be transported long distances in the era before rail,[13] most of the kinds of produce the food historian and lawyer is concerned about could not be imitated in a way that made commercial sense. It is therefore unsurprising to see that the earliest laws concerning geographical protection mainly surrounded products that could comfortably travel long distances, and were expensive enough to merit imitation. The medieval German beer purity laws are a sterling example of such targeted protection – beer, after all, is a remarkably robust product.[14]

The first definitive move towards protection of geographical indication, therefore, had to wait until the 19th century, as preservative technology improved to allow greater trade across regions. A first, failed attempt to impose liability for fraud was found in the draconian law of 22 Germinal in the XI year of the French Revolution – that is to say, 1803.[15] Though the law certainly protected trademarks in the most basic sense of fraud[16] , the criminal remedies involved were far too severe to ever apply.[17] The second, far more serious attempt to protect geographical indication was codified in statute by the law of July 28, 1824, which established criminal penalties for those who falsely indicated the origin of goods, [18] or for those who lied about the producer of goods.[19] There was no obligation to actually label your product – if the producer wished, they could certainly remain “anonymous”.[20] But if you did choose to speak about your product’s origin, what you said had to be true. Though this law was necessarily a primitive development, it has never been abrogated,[21] and its enforcement has continued despite the arrival of more sophisticated statutes. By 1930, for example, the 1824 statute was still being used to determine that Algerian oranges could not be labeled as Spanish.[22] And though clearly a preliminary effort to assign a geographical indication, the 1824 statute was the first step in a long road to the modern law.

B. The Development of Modern European Geographical Indication

1. The First Fraud Regulation

The first modern regulation of labeling fraud in France was promulgated on August 1, 1905.[23] Like the 19th century document, the 1905 law did not require labeling. The 1905 law was a novelty, however, because it no longer limited itself to fraud about geographical provenance – rather, if a product was labeled, the producer was expected to represent his or goods truthfully to the purchaser. [24] As we shall see when we examine the 1902 and 1906 Food and Drug Acts in the United States, in other words, the French law of 1905 was a basic misbranding provision, developed for many of the same economic reasons as its American counterparts.

As in the United States, however, historical exigency spurred further dramatic developments in the law.[25] While the anti-fraud provisions were welcomed by those in specialist trades, they sensibly wanted more protection for their local products – fraud guidelines, after all, still allow lesser products to undercut those of the highest quality. But this mild discontent was stirred mightily by the cataclysmic arrival of the vine disease Phylloxera across the breadth of French wine making country. [26] Staggered by the loss of most vineyards, and now faced with the extraordinary cost of replenishing the vines (often from such far-flung locations as California) winemakers wanted assurances that their efforts would at least eventually be rewarded by the market.[27] The government’s response was muted, and so the French wine industry struggled on through repeated outbreaks of the dread disease.

French winemakers were still staggering under the weight of the crisis at the turn of the 20th century – and the continued indifference of the government became increasingly irksome. Finally, in 1907, these tensions crystalized into an extraordinary episode of peasant revolution, long an ingredient of French politics[28] – the great Midi wine revolt.

2. The Midi Wine Revolt of 1907

As described above, the historical consensus has long been that the wine revolt of 1907 was a direct result of the Phylloxera outbreaks in the late 19th century. The path between disease and revolt, however, was less straightforward than it might seem to be. Had the problem been the disease itself, the cause of the social disturbance would have been insufficient supply of wine and grapes. By 1907, however, the worst of the recovery period had passed - wine production in the Midi region, in fact, was on an upward swing- [29] so much so that the crisis, when it came, turned out to be one of oversupply .

Certainly, the local vintners were doing their best to produce wine. But in addition to their honest efforts, less scrupulous wine producers began increasing production by taking shortcuts like adding sugar to wine to speed fermentation.[30] Even worse, from the farmer’s perspective, wine imports were flooding into France from newly established Algerian vineyards.[31] In the face of these pressures, the 1905 law against fraud was insufficient[32] – the Algerian and local wines were often honestly labeled as to their grape varietal, at least enough to fit into the relatively lax statute. The problem was these wines were of lower quality - confusing the marketplace - and available in tremendous quantity.[33] Unsurprisingly, the resultant glut in supply precipitated a collapse in the price of wine throughout France, and especially in the Midi.[34]

The Midi was one of France’s most important centers of wine production, and had been simmering for at least a decade before this last crisis of oversupply. Most recently, 1904 had seen widespread strikes across the region demanding higher wages, as profits seemed to be temporarily improving with the industry’s partial recovery from the latest spate of disease.[35] When prices collapsed in late 1906 due to the new crisis, the local farmers had had enough – they demanded urgent action from Paris to protect them against the alleged fraudsters and Algerian importers.[36] Despite warnings from subordinates who knew the region well, newly elected Prime Minister Georges Clemenceau reacted sclerotically to the crisis, taking limited steps to reign in the worst excesses.[37]

Enraged by what they saw as the Parisian government’s insufficient response,[38] local leaders began a series of extraordinary demonstrations in the summer of 1907, growing in size and power as the days grew warmer. Initially, this movement was limited to impassioned gatherings where a “small grower and café owner” named Marcelin Albert delivered populist speeches rooted deeply in the labor movement – “We are the largest army of labor ever seen . . . our cause is the conquest of bread”.[39] The Paris government felt so unthreatened by the uprising that Prime Minister Clemenceau actually authorized free trains to be laid on for the protesters to make their way around the buzzing region. [40] This tactic of benign appeasement backfired dramatically. Soon, the meetings became enormous festivals of unrest, piling hundreds of thousands of wine industry workers into the medieval streets of important market towns across the region, many of them holding angry, provocative signs – as one radical memorably put it, “give us bread or give us lead”.[41] At the climactic meeting in Montpellier, Albert spoke to a crowd of 500,000 people, and as the New York Times reported, in reality “Marcelin Albert has a million of Peasants under his Command”.[42] Buoyed by the multitudes’ messianic zeal, by mid-summer, Albert (now known as “the Redeemer”) had even managed to shake Clemenceau’s national government.[43]

Still, however, Clemenceau failed to act. In his absence, Albert and his lieutenants took the next step - dramatically, they refused to pay taxes to the national government, and commanded all sympathetic members of local counsels across the region to resign en masse .[44] Shocked, Clemenceau wrote an impassioned letter to the resigning officials, imploring them to remember their duty to their neighbors and their country.[45] Albert’s response was brief and unsympathetic –

We have no orders to receive from the President of the Council. I urge all the federated municipalities who have resigned to be guided by his decision.[46]

Finally pressured by the sheer number of protestors and their unmatched ardor, Paris reacted definitively. Unfortunately, the Government’s answer was not quite what the protestors hoped – on June 18th , Clemenceau ordered the French army to invade the Midi, aiming to decapitate the protests by tying down its urban centers.[47] The result, to some extent, was disastrous for both sides – there were fatal riots in Montpellier, Narbonne, and Perpignan,[48] while in the town of Beziers, Clemenceau’s mistake in ordering the local Languedocian 17th infantry regiment to attack the protestors resulted in a bloody mutiny.[49]

Abashed by the violence, Albert finally made a critical mistake. Hoping to stop further degeneration, the peasant leader took it upon himself to visit Clemenceau personally to explain the people’s case.[50] Arriving completely unannounced, Albert was somehow able to secure an appointment with the Premier – arriving at his office luggage in hand[51] - but things went badly from the beginning. Though Clemenceau listened to the “sunbaked” farmer, he refused any accommodation, and instead delivered a stern, imperious, lecture on Albert’s duty to obey the law.[52] Albert is said to have wept before the President[53] , unable to withstand his withering call to civic duty.[54] Indeed, the only thing that saved Albert from arrest himself was Clemenceau’s aristocratic refusal to imprison a “guest”.[55] Much worse than Albert’s abject failure to persuade Clemenceau to act favorably, however, was the fact that the prostrate revolutionary eventually accepted Clemenceau’s proferred 100 Francs to buy a train ticket back to the south.[56] His followers might have forgiven weeping before Clemenceau, but when word broke of Albert’s apparent perfidy in accepting payment from the enemy (the public found out when Albert sent Clemenceau a thank you note)[57] , reaction in the Midi was stark[58] – where once Albert had been leader of millions, by the end of the summer he was imprisoned, heckled by his former supporters, and reduced to writing plaintive letters to the editors of decreasingly important newspapers explaining his position.[59]

Without Albert’s inflammatory power, and with the army occupying major urban centers, the protests died down by the end of the summer. But aiding the end of the revolt was the fact that the national legislature had finally acted, passing preliminary wine fraud bills which answered at least part of the wine grower’s complaints. The 1907 Midi revolt, in other words, was more than simply an interesting historical episode, but like the publication of Upton Sinclair’s The Jungle in the United States, a formative moment of food and drug law.

3. The First AOC laws come into effect

To finalize their response, the French government provided much stronger protections for traditional artisans through the so-called Loi Cazeneuve of August 5, 1908.[60] Not only did the law respond to demands to stop the production of fraudulent wine by establishing minimum standards for use of names, but it also tried to reassure producers of higher quality products by granting protections to the wines of specific regions through so –called “appellations of control”, or AOC for short,[61] limited areas outside which a wine varietal name could not be used legally. The definition of each appellation was to be set by an administrative agency, through discussions with experts and local producers.[62]

Fundamentally, however, the law of 1908 proved vulnerable to two connected problems. First, the provisions of the law proved extremely difficult to administer[63] – not only was there excessive wrangling about appellation definitions[64] , but the changing boundaries of French administrative divisions meant that vignerons who had long thought themselves as making Champagne suddenly found themselves just miles outside the new appellation, and shut completely out of trademark protection – the result was a smaller, but still striking revolt in Champagne in 1911.[65] Second, the administrative rulings that did issue on particular wines in the wake of the 1908 law were notorious failures - [66] the reason that further reform was necessary, simply put, was that all the products of one region, whether they be “good, mediocre, or frankly bad”, were benefiting from GI protection.[67]

Before further reform could be enacted, Europe was plunged into the fiery crucible of the First World War. Facing a shattered country in the great conflict’s aftermath, the French government began enacting broad reforms to help the economy recover. Finally, their eyes turned to the temporarily dormant wine crisis – the result, a comprehensive settlement that covered all food products, became law on May 6, 1919, and proved a revolutionary change for both the wine industry and geographical indication. [68]

This statute, with some relatively minor revisions, remained controlling on the matter of geographical indication protection in France until the adoption of the European regulatory scheme in 1992.[69] Some of that endurance is explained by the fact that the new scheme differed in important ways from previous efforts to protect geographical indication, and even from the law of 1908. Most important was the fact that protection was now premised on proof of substantive quality – using a wide range of evidence, [70] producers wishing to take advantage of the new law had to show that their methods were tightly connected to the local territory and traditional methods and quality.[71] Poor examples of Burgundy no longer could claim the valuable name.

Furthermore, until 1966 there was no administrative component to GI protection in France – producers wishing to be protected by the law simply began using the mark, and if they went unchallenged by other interested parties, they were legally authorized to do so.[72] This not only reduced the administrative burden that had so bedeviled the 1908 law, [73] but also made it more flexible across administrative provinces.[74] Though an administrative component was reintroduced into the system in 1966,[75] by then developments in the efficiency of administration had dramatically reduced the transaction costs inherent in developing categories of geographical indication.

However revolutionary, it is important to realize that French geographical indication regulation under the law of 1919 never guaranteed blanket protection for traditional foods – the review process, carried out by either the courts or administrative agencies, had teeth. Purely as a formal matter, there are numerous limits on registration, and registered appellations can even lose their status through legislative action or through the degeneration of the supposed appellation.[76]

Even more important, however, the limits on AOC registration are serious controls on the availability of legal protection. The French cheese camembert, for many people, is the paradigmatic cheese of France – soft, powerful in both aroma and taste, Camembert outsells its far more ancient rival of Brie equally widely in the French and the foreign markets.[77] Despite its fame and deeply traditional production, however, Camembert has never enjoyed geographical protection.

This was not for a lack of effort. Driven by competitors making similar cheeses of less tasty skim milk, the Camembert producers of Normandy organized in 1909 to create the Syndicat des Fabricants du Veritable Camembert de Normandie (SFVCN).[78] This group, like the wine producers, first called upon its local political representatives for succor, [79] but got nowhere after being unable to muster the kind of popular unrest used so effectively by the wine merchants. After the 1919 AOC regulation came into effect, SFVCN moved enthusiastically to acquire the new protection.[80] Despite an initial victory,[81] however, they were largely unsuccessful – the French courts thought the protection of Camembert a substantively different matter than that of its much older rival Roquefort.[82] Efforts to introduce a Camembert geographical indication in the administrative law era were equally fruitless – to put it simply, the French government found Camembert to be a generic product, having passed beyond the reach of geographical protection under the 1919 law.

Even the SFVCN’s partial victory in 1983 demonstrates the strict limits set by French statute on geographic indication. Precluded by previous decisions from seeking protection for the full name of Camembert, the Camembert producers were forced to settle for a geographical mark protecting Camembert de Normandie .[83] This mark certainly provided a distinct brand for high quality cheeses, as the producers wanted. But cheeses of all kinds could still call themselves simply Camembert.[84] As this surprising example demonstrates, in other words, the French system sets limits on the products to which it is willing to grant protection. Fears that all European products would be granted geographical indication protection if a new regime adopted in this country, therefore, seem to be belied by the fact that even locally resonant products have been denied valuable registration rights in the past.

C. European protections of Geographical Indication

This long history of geographical protection came to a head as the European Union began coalescing into a real trading power in the late 20th century. Inspired in 1992 by France[85] , the European Union promulgated a range of rules that together mandated the creation of a fairly comprehensive scheme of geographical protections. The European Commission’s plans, supported by the member states, were very clear about the reasons for their genesis. The regulations, as demonstrated by the legislative history, had the usual dual purpose we expect:

The planned inspection system will provide the consumer with a guarantee of the origin, method, method of manufacture and quality of the product . . At the same time, the designations used by farmers . . . will be protected against misuse by third parties.[86]

The revisions as the plan wound its way through the European legislative process were substantial.[87] Nonetheless, the focus was always on the kind of system that France had tested for decades, and that is what Europe enacted in Regulation 2081/92.[88]

Because the plan is complicated, I summarize it below.

For foods and food products, council regulation No 2081/92 designates two kinds of protections for local products:

1. Protected Geographical indication - PGI status, according to the regulation, is to be accorded to agricultural products or foods which originate in a region, specific place, or country, and which possess a specific quality, reputation or other characteristic of that geographical area.[89] PGI protection applies for an extremely wide range of products, [discuss what products here, and discuss why it’s under PGI and not PDO]

2. Protected Designation of Origin – PDO status is a slightly different creature, to be applied to products which originate in a specific region, place, or country, and have qualities or characteristics which are essentially or exlusively due to a particular geographical environment.[90] The paradigmatic example of PDO protection is the greatest French cheese of all, Roquefort, which owes its characteristic blue veins and strong, salty taste to the local ewes milk of its region, and even more closely to the long tenure of the penicillum roqueforti in the caves of Combalou above its namesake village.[91]

A parallel scheme of protections is provided for products that are not geographically but methodologically distinct. These so-called Certificates of Specific Character are available for products that are produced using traditional materials or are characterized by a traditional composition or way of processing.[92] A famous example of such a certificated product is mozzarella[93] – not geographically distinctive enough to merit PDO or PGI status, but a product of sufficient distinctiveness to allow for some protection for those who make the cheese in the correct way.[94]

These protections for food are joined by similar legislation for wine and alcohol, found in EU regulation. Though the wine and spirit regulations are more complex than those for food, largely for reasons that have little to do with geographical indication, their intent is the same.[95] In Europe, both foods and alcoholic drinks are covered by a wide ranging geographical indication regime.

In all cases, the procedures for application are relatively similar.[96] A group of producers must band together and prepare an application for the protected status.[97] If a later producer fits in to the protected category, of course, he too can use the PGI mark.[98] In any case, the application is sent to a national regulatory authority – in the United Kingdom, for example, applications are routed through the Department for Environment, Food, and Rural Affairs (DEFRA).[99] If the national authority is satisfied that the application fulfills EU law (as I note elsewhere, it must not duplicate a trademark), for example, the product is submitted to the European Commission for final approval. The EC then has six months to approve or disapprove protection. Usually, the product’s application is approved, and the protected mark published in the Official Journal of the European Union.[100]

III. The History of Geographical Protection in the United States

In sharp contrast to Europe, of course, the United States provides no centralized “list” of geographically protected terms for food products. As I will discuss in Part IV, this omission has become a subject of considerable debate between the United States and its Continental trading partners. The history of American attitudes to geographical protection, however, is interesting purely as a historical matter, rooted in dramatic moments in American history, and is also less clearly opposed to European style regulation than most commentators believe.[101] As a survey of the common law, federal statutes, and state laws demonstrate, Americans have long sought to shield local products from unfair competition. Though their methods have differed somewhat from those adopted in Europe, the fact remains that Americans too have long understood the value of protecting products made by local craft and local expertise.

A. The Common law attempts to protect geographical indication

Much of the case for American exceptionalism in matters of geographical indication comes from a basic intuition that Americans have never really understood “human factors”, or regional diversity, in protecting intellectual property. There is trademark or there is nothing, the argument goes – and trademark law, as we shall see below, does not extend to the full range of geographical indication covered by European regulations.

The earliest common law cases that grapple with these questions, however, betray a fundamentally different emphasis than that usually assumed. In the Pillsbury-Washburn case, for example, a dealer of flour attempted to pass off his Chicago product as hailing from Minneapolis.[102] Finding no violation of any legal duty, the trial court denied the plaintiff Minnesotan farmers their requested injunction.[103] As Judge Showalter put it, consistent with the version of the common law advocated by those who see a fundamental divide between geographical indications and the United States,

The words on a flour package are not, on this understanding, a representation that the flour therein was made by any particular person or at any particular mill. They have, hence, no function as a trade-mark. They are not a sign of origin of which, as incidental to the good will of any particular milling business, a property right could be predicated. . . the ‘wrong’ or ‘injury’ complained of is imaginary .[104] (emphasis added)

When the case reached the 7th Circuit Court of Appeals, however, their decision was clear – and startling. [105] The problem was not that the Chicagoan dealer had simply lied, the Court said. Misleading labels were not yet illegal.

Rather, the Chicagoan was liable because he lied knowing that Minnesotan flour was thought to be a superior grade of flour, made so by a distinctive “Hungarian patent process which is especially adapted to hard wheat”.[106] The fact that the protection granted to the Minnesotan millers resembled greatly a European geographical indication rather than a trademark was emphasized by the Court in concluding that the accused miller could simply have moved to Minnesota if he wanted the benefit of the high value name –

“in the case at bar, the complainants can have no exclusive right to the use of the geographical names of ‘Minneapolis’ or ‘Minnesota’. They are not the subject of a trademark proper . . . [t]he defendant or any other person from any state may go there, and establish a mill, and brand his flour Minneapolis, Minnesota”.[107]

Even more surprising, the Court went so far as to cite the French law of 1824, which I have argued above was the progenitor of French geographical indication law .[108] Specifically, Judge Bunn argued, the danger that arises when courts do not act to protect geographical indications was that “before the public notices the deception, it has become disgusted with the inferior goods, and a flourishing branch of industry is ruined at a blow”.[109] Unmistakably, the 7th circuit was concerned about what we now call geographical indication in this case, and its decision was followed repeatedly over the years.[110] Even before the great wave of legal efforts to regulate food began to have their effect on geographical indication in America, in other words, common law judges had already begun thinking about how to distinguish high quality, local, products.

B. The Earliest Efforts to Protect Geographical Indication

As is well known, the late 19th century saw the very beginnings of state efforts to regulate the purity and sale of foods.[111] The traditional explanation for these efforts concentrates on a national drive for healthier foods spurred by shocking revelations of filthy conditions in meat packing, dairy, and manufacturing plants, and wide-spread imitation.[112] As Peter Hutt puts it, “By 1879, there was a full-fledged public outcry against adulteration of food and drugs in the United States”.[113]

Though health concerns were central to the development of food regulation in the United States, the shape of the resulting legislation cannot be fully explained without taking into account commercial issues as well. With the development of wide-ranging railways in the second half of the 19th century, regional producers of foods, like those in France, came under pressure from cheaper competitors across the country. Often, however, these competitors achieved their cost savings by cutting important corners, allowing local farmers to make a plausible case that they needed protection against fraudulent but perfectly wholesome foods to ensure their survival. While food safety was eventually to become the driving force of the 1906 Act, therefore, early legislation was also driven by a desire to protect local business from unfair competition.[114]

These relatively undeveloped laws had a number of common features. First, many of them included a general prohibition against false branding of cheese or milk as to location that look very much like the French law of 1824. Of course, such protection is explicitly meant to protect commercial enterprise rather than safety, since cheese labeled as local but falsely produced elsewhere was no more likely to be unhealthy than the genuine article, especially in the treacherous manufacturing atmosphere of the late 19th century. New York, for example, declined to include such general protections in its first food law passed in 1881,[115] but soon revised its legislation to include a relevant provision. As revisions to the law passed in 1884 noted, “no person shall offer, sell, or expose for sale in full packages, butter or cheese branded or labeled with a false brand or label as to the county or state in which the article is made”.[116]

A second basic strategy to assure local provenance was simply to allow locally produced cheeses to mark themselves with a special brand. This shift from a purely provenance based regime to something more substantive, in some ways - though for limited products and in an ad hoc way – even presaged the French AOC law of 1919. Eager to protect its high value cheeses, New York led the path here as well, passing in 1881 “an Act to provide country trademarks for stamping or making pure butter and cheese in the several counties of the state”. [117] Though the protective provisions were fairly limited, they did include an intriguing right to affix a county trademark on your cheese that let consumers know that it was made in the traditional way with full fat milk, and in a particular county.[118] The State legislature revised the law the next year, making the intent to protect local foods even clearer – in addition to the right discussed above to affix a county trademark on cheeses, manufacturers of “full-milk” cheeses were allowed to add a brand on their cheese indicating its provenance as “New York State full cream cheese”.[119] This law has also survived in modern legislation, as a right to brand New York state cheddar type cheeses with a special seal certifying that the cheese meets “the requirements of the highest grade for New York State cheese”.[120]

Other states followed the same path, sometimes with considerable enhancements. Pennsylvanian law, for example, created five grades of cheese,[121] allowing producers to stencil their product’s quality on the side of the cheese to make sure that they received the benefit of their efforts.[122] Wisconsin similarly created a stencil allowing certified producers to use the title “Wisconsin Full Cream Cheese” to differentiate their product from inferior producers.[123]

Of course, if enforcement of these laws was poor, then it seems unlikely they were particularly important.[124] Certainly, newly formed local agencies designed to protect food safety are unlikely to good at protecting commerce. In the case of these commercial pieces of legislation, however, state legislatures solved the problem of enforcement by designing the commercial side of their new food laws to be enforced by competitors through resort to so-called “private attorneys general”.[125] The Wisconsin provision on this point is perfectly representative –

Whoever violates the provisions of this act shall be deemed guilty of a misdemeanor and for each and every package so falsely branded or omitted to be branded as herein provided, shall be punished by a fine of not less than twenty-five, nor more than fifty dollars, one-half of which shall be paid to the person or persons furnishing the evidence upon which such conviction is made[126]

These remedy provisions are more than tangentially important. The important point to note for our purposes is that in no case were the tainted products confiscated by the government, as was the case in later health driven legislation. Rather, the legislator’s focus was on making sure that consumers were not mislead, and that producers of high value goods were able to take advantage of their expertise.

Clearly, these new laws had serious deficiencies. They did nothing for producers of foods outside the state in which the law was passed, for example – New York cheesemakers could not stop their wares from being imitated in Maryland. But the ideas in these laws, rooted both in the common law, and what Americans saw overseas, were important to the development of more national solutions.

C. The 1902 Act

Food and drug issues continued to be big news at the turn of the 20th century, but the deficiencies of the previous state laws caused action to be taken to the Federal level, driven by justified agitation in Washington. Unsurprisingly, scholarly attention has concentrated on the much more sweeping 1906 Act.[127] There are good reasons for this. The 1906 Act, discussed below, represented a monumental change in the way that food regulation was handled by the federal government.

In that context, the seemingly innocuous 1902 food act has been generally subsumed into the more general “food safety” moment that is thought to characterize the end of the 19th century. Certainly, there is nothing particularly striking about the statute itself – in total, it commands that

[N]o person or persons . . . shall introduce into any State or Territory of the United States or the District of Columbia . . . any dairy or food product which shall be falsely labeled or branded as to the State or Territory in which they are made, produced, or grown.[128]

Conflating the 1902 Act and the 1906 Act, however, is a mistake. Though it is true that in some ways the same basic trends towards greater federal regulation drove both pieces of legislation, the 1902 Act, likes its state law predecessors discussed above, was clearly a piece of commercial legislation. It was designed, in short, to protect geographical indication.

The bill first came before congress in 1900, pushed by the Committee on Interstate and Foreign Commerce in an effort to stem some of the imitation that had been causing merchants the trouble that states had tried to alleviate with the laws described above.[129] It did not get anywhere in that session, but when the Bill was brought forth again the next year, Congress’s concern had not changed. The problem, the House Report noted, was that

“no interstate commerce laws which adequately protect any State or Territory from the efforts of designing or unscrupulous dealers from outside . . . to impose upon the public food or dairy products, branded or labeled as the product of a State or Territory famous for the production of a certain commodity or luxury”.[130]

The particular kinds of products Congress was concerned about is further evidence that their driving idea was to protect geographical indications from dilution. Not only did Congress cite the paradigmatic local product, Vermont maple syrup,[131] but also the same New York State full-cream cheeses that the Empire state had protected a few short years earlier.[132] Particularly telling is the fact that Congress noted specifically the problem of counterfeit cheese going to Europe – another indication that lawmakers were worried about the competitive effects of inferior cheeses being able to masquerade as the higher quality New York product. As Congress noted, “it is on record before [the] committee that one dealer, who refused to fill an order with the counterfeit label and number, lost a large amount of business . . . but such honest action, unfortunately, is not always the rule”.[133]

It should be noted, of course, that the bill was not comprehensive in the way one would imagine a true geographical indication scheme to be. In fact, precisely like its French counterpart (the law of 1905) discussed above, the 1902 Act did not actually require food manufacturers to add any labeling denoting geographical status – as the Attorney General noted at the time, the Act “does not provide that such products shall be labeled or branded as to show the State or Territory in which they are produced, . . . [but] merely that such products will not be falsely labeled or branded.” [134] This was a serious limitation, even if the law did seem to contemplate labeling that tried to trick the customer without making any explicit geographical claims.[135] Just as relevant for our purposes, the Act did not apply to foreign products wrongly labeled as to their foreign source – a hard grating cheese made in Britain, but labeled as Italian Parmesan, for example, would have been entirely outside the purview of the legislation: “thus, if articles of foreign origin are imported into New York . . . and thence introduced into another State or Territory with a label or brand falsely stating their origin as to another foreign country, the case would not fall within the provisions of the statute”.[136] Without further developments, therefore, European producers were entirely out of luck.

Almost simultaneously with the above act, Congress moved to protect Champagne from adulteration, and incorrect labeling. The act, if passed, would have forbidden the sale of artificially carbonated wine as champagne.[137] Fundamentally, just as was the case with the 1902 Act, Congress’s focus was quality rather than safety. The reason Congress was acting was to protect the market from artificially carbonated “champagne” – as they put it, “true champagne require[es] years for ripening and a great amount of care in handling . . . [while for] artificially carbonated champagne, but a few minutes are required”.[138] The problem was that the consumer “who in ordinary cases is not a connoisseur”, was fooled.[139] Otherwise, as one witness critical of similar provisions of the 1906 Act noted credibly, the imitated wines were perfectly sound - “from a health standpoint, chemists and physicians indorse (sic) champagne made by the modern process, and declare it far purer than that made in the old and crude way”.[140]

What the combination of the (successful) misbranding Act of 1902 and the (failed) Champagne Act of the same year show is that Congress was thinking hard about how to protect agricultural commerce through law. Furthermore, they used time tested methods, more or less imported from contemporary Europe, to do the job.

D. Geographical Indication Is Integrated into the 1906 Act

The 1902 misbranding Act had a remarkably short and uneventful life. In 1906, Congress passed a sweeping Food and Drug Act under the stewardship of President Theodore Roosevelt, subsuming previous enactments on food and drug law. As far as I can tell, no cases were ever brought under the 1902 Act in its own capacity.

The idea of geographical indication protections in the Federal law, however, did not disappear. Rather, the labeling provision too was subsumed into the new Act, and remains very much a part of US law. Our definitive source on the legislative history of the 1906 Act makes the provenance of the 1902 Act, and its continued influence in the 1906 Act, quite explicit. Describing the misbranding provisions, Arthur P. Greeley wrote in 1907 that the misbranding provisions of the late act were intended to protect local products:

In many foreign countries certain localities have become noted for the production of certain food products which are peculiarly dependent for their character upon the soil or climate conditions, and the same is true of certain localities in the United States.[141] [Listing distinctive food products], are all food products which by reason of the efforts of the producers in the localities indicated are generally recognized on the market as distinctive products commanding the higher prices.[142]

Though no cases had been brought under the 1902 Act’s provisions, enforcement of the 1906 Act was vigorous. The most common cases, by far, were those that concern wine and champagne - given the history of product specific protection we saw above,[143] and the fact that Greeley himself notes the importance of these particular geographical indications,[144] this is unsurprising. But there were other cases too – and when courts saw that false labeling was likely to disturb what we know term as geographical indication, they were willing to act.[145]

E. The time of trademark

For half a century, the United States has also provided protection for geographical indication through certification marks, changing a traditional common law rule that excluded geographical names from statutory protection. These collective marks were first incorporated into US law by the Lanham Act in 1946, and have been widely used since. [146]

In short, certification marks are defined as “mark[s] owned by one person and used by other in connection with their goods or services to certify quality, regional, or other origin”.[147] Unlike European geographical indication regimes, certification marks are not in any sense controlled by the government[148] – the idea behind them is that the consumer seeing the mark will trust the organization who issues it as a symbol of quality.[149] Though lacking this government imprimatur, certification marks remain effective ways of trade-marking important types of production, and once they realized that the relatively minimal protections of the 1902/1906 acts were insufficient, producers quickly began to institute certification applications. To take one telling example, Roquefort cheese has held a certification mark under the Patent Act since 1954, protecting “a sheep’s milk cheese . . . cured in the natural caves of the Community of Roquefort”.[150] This has been enforced diligently by the holder of the certification mark against those who transgress it – in the Community of Roquefort v. William Faehndrich, for instance, the court rejected an imitator’s claim that the mark “Roquefort” had become a generic indicator of blue cheese, noting instead that no evidence existed at all of some other cheese that used the same mark. [151] Similar kinds of products have also received protection even more recently. Cognac, to take one particularly valuable example, was granted a certification mark only in 1998.[152]

F. The wave of State Statutes and the regional integration of PGI into US law.

Following the establishment of PGI status in the European Union in 1992, American artisanal and specialty producers of food looked wistfully at their European colleague’s new privileges . This need for more protection manifested itself in a series of PGI like statutes which went beyond trademark, as discussed in Part V, to establish very specific protections for local produce. There are a range of such examples – Vidalia onions were protected in Georgia.[153] In Minnesota, the legislature acted to differentiate true wild rice, harvested by hand, from the exotic looking but industrial black rice that sells as “wild” in most supermarkets - [154] while the Virginians legislated to protect their famous hams, worthy competitors of Italian proscuitto and speck .[155] Unsurprisingly, Florida chose to draw the line at Oranges, passing legislation to protect the distinctive Indian River Navel Oranges.[156] But perhaps the most interesting of this new wave of geographical indications, was the law initially passed by the Hawaii legislature to protect Kona Coffee in 1992.

As many aficionados of coffee can attest, Kona coffee is blended from a high quality bean produced on the Hawaiian island of the same name. The strong drink has a long history in America’s most western province – the first beans are said to have been planted in 1817, by the Hawaiian King’s Chilean interpreter, Don Francisco de Paula Marin.[157] Marin’s efforts didn’t take,[158] but when Chief Boki, the governor of O’ahu, hired an English botanist to come to Hawaii and cultivate the plant in 1825, he had better luck.[159]

Coffee plants took well to Hawaii’s remarkable climate, and the crop grew over the next century. The coffee industry’s health, however, has always teetered on the edge of jeopardy due to naturally fluctuating yields and the vagaries of taste – in periods when Americans drank less coffee, they drank less Kona too. Unsurprisingly, this led local producers to think hard about ways to increase both the demand for Kona coffee and its price. As early as 1959, a University of Hawaii study sought to provide a clear path for the product in the future.[160] Among the study’s recommendations were ideas to help improve brand recognition among the mainland public - Kona producers, the authors said, should

Sell only the highest grades of coffee as Kona Coffee . Find other outlets for inferior quality beans. The stress must always be on quality, since Kona Coffee represents less than 1% of the total world supply.[161]

In addition, the authors recommended that farmers create a “centralized cooperative organization for marketing and processing purposes”.[162] Since Kona farmers were often unsophisticated and small, without such a centralized effort they would be unable to compete in the world market.

By the 1960’s, the farmers had followed at least this suggestion - [163] the Kona Coffee Association, made up of representatives from coffee cooperatives, had been formed to establish coffee grading standards.[164] In 1984, the torch was taken by the Kona Coffee Council, which incorporated farmers as well as co-op representatives onto the board.[165] But the early history is as notable for what is missing as for what happened – neither the 1959 document, nor the subsequent thirty years of history, discusses the possibility of either trademark or geographical indication protection. It was only after further market disturbances, and the realization that Hawaiian coffee producers outside Kona were using the name in blends, that Kona farmers pushed for special protection.[166] Finally, in 1992, they were able to guide a statute through the state legislature which in its current form guarantees that any coffee bearing the Kona name consist of coffee “that is grown in the geographical regions indentified as North Kona and South Kona districts on the island of Hawaii and which meets the grade standard requirements as adopted under chapter 147”.[167] The statute was to undergo further revision that brought it even closer to European style regulation. In 1996, after a harrowing scandal in which a major Kona producer, Michael Norton, ended up in prison on FDA misbranding charges for selling adulterated Kona, the Hawaiian legislature eventually approved pre-shipping authentication of Kona labeled coffee.[168] When combined with the certification mark that was finally awarded in 2000, [169] Kona coffee producers had used all the available methods of geographical indication available in the United States to protect themselves from imitation both inside Hawaii, at the point of protection, and throughout the country. In doing so, the Kona farmers are a paradigmatic example of how geographical indication protection has long been sought and received by American producers. And generally, U.S. governments on both the state and federal level have responded.

IV. The International History of Geographical Indication : a story of debate and conflict

The Protected Geographical Indication model I discuss in Part II above, of course, necessarily applies only in Europe. The earlier French laws applied only in France. But from the very beginning of geographical indication law, owners of geographically distinct products have attempted to persuade foreigners to protect their products abroad as well.

France has long argued, in this vein, that trading partners should respect its AOC and other geographical indication systems. These efforts began even before geographical indication became settled law in 1919. As early as 1891, in fact, France negotiated a treaty protecting indications of source, plainly based on then current fraud-based regulation of labeling.[170] Specifically, the Madrid Agreement, as it is colloquially known, [171] provides that

All goods bearing a false or misleading indication by which one of the countries to which this Agreement applies, or a place situated therein, is directly or indirectly indicated as being the country or place of origin, shall be seized on importation into any of the said countries[172]

Far more aggressively, in 1967 France was able to secure ratification of the Lisbon Agreement for the Protection of Appellations of Origin.[173] This more ambitious treaty essentially protected a French like system of geographical indications through an organization with an independent budget[174] , and which operated through international registration. That is to say, in order to have protection under the Lisbon Agreement, appellations of origin were to be registered at an “International Bureau”, which would coordinate protections throughout the special union formed by the treaty.[175] By 1997, 738 appellations of origin had been registered under the agreement, with the vast majority (472) emanating from France.[176]

French exertions on this point have also been undertaken on the bi-lateral level. The model for these relatively numerous agreements[177] is that between Germany and France, signed on March 8, 1960.[178] In short, bilateral French geographical indication agreements generally require that each signatory promise to keep listed products from being used outside their specified region.[179] In one Annex is a relatively standard list of French products, encompassing a limited but predictable list of cheeses, wines, liquors, and other specialties.[180] The counterpart signatory lists its own protected products in another annex - [181] leaving changes to be made only with the agreement of both parties.[182]

Crucially, the United States was part of neither international agreement - even though, as we have seen, the Madrid Agreement at least was substantially equivalent to the 1906 Act provisions of the Food and Drug Act.[183] This was not because of lack of care. The US debated, and rejected accession to both these agreements.184 Furthermore, the United States has no bilateral treaty with France, except for a very limited equivalent protecting certain alcoholic drinks[184] , since superseded by the multilateral agreement discussed immediately below.[185]

International law had, for most of recent history, been no more helpful in expanding geographical indication protection to the United States, or elsewhere. Clearly, the GATT regime in force until 1996 did not provide full protection for European geographical indications. Rather, Article IX of the GATT treaty, merely requires that

The contracting parties shall co-operate with each other with a view to preventing the use of trade name in such manner as to misrepresent the true origin of a product, to the detriment of such distinctive regional or geographical names of products of the territory of a contracting party as are protected by its legislation.[186]

This protection, though superficially wide ranging, was construed by GATT panel decisions to require nothing more than a basic regime of trademark and unfair competition law.[187]

To take one example, in 1986 the European Community initiated litigation within the GATT dispute resolution system against Japan for neglecting to enforce the above Article IX.[188] The litigation arose, unsurprisingly, after it became apparent that Japanese wine and spirit producers were labeling domestic Japanese wines with plainly European appellations.[189] Even though the EU brought an action, however, and even though consumer confusion was plain – the GATT panel referenced an EEC survey in 1986 which showed that 45% of Japanese consumers were confused by labels that included such obviously European appellations such as v.s.o.p for brandy and “Riesling” for wine[190] – the GATT panel ruled against Europe. Particularly determinative for the GATT panel was the fact that the confusing labels “indicated their Japanese origin”, [191] and that GATT article IX contained no obligation to go beyond this basic duty to ensure truthful labeling.[192] Just as clearly, the Panel ruled that Japanese participation in the Madrid agreement was primae facae evidence that they fulfilled their GATT Article IX obligation – in other words, the obligations in GATT were essentially the same as those limited requirements found in the early treaty.[193]

Spurred in part by the inadequacy of GATT provisions, European negotiators pushed hard in the Uruguay round of trade talks, which established the WTO, for specific provisions on geographical indications.[194] After aborted efforts by the United States to substitute its own trademark based proposal for the European style geographical indication ideas[195] , the Uruguay Round, through the “Trade Problems Encountered in Connection with Intellectual Property Rights” (TRIPS) agreement, settled on two broad protections for geographical indication. On one hand, Article 22 established general protections for all “goods”, merely requiring the existence of certification marks or such equivalents for most foods.[196] Article 23 and Article 24 of the agreement, which extended geographical protections to wines and spirits, provided for much wider protection[197] , as follows.[198] The substantive standard was given in Article 23(1):

Each member shall provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits not originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated to the geographical indication is used in translation or accompanied by expression such as “kind”, “type”, “style”, “imitation”, or the like.[199]

Article 23, importantly, was modified by a grandfathering clause in Article 24 which protects historical uses of particular geographical indications in other countries:

Nothing in this Section shall require a Member to prevent continued and similar ´use of a particular geographical indication of another Member identifying wines or spirits in connection with goods or services by any of its nationals or domiciliaries who have used that geographical indication . . . (a) for at least 10 years preceding 15 April 1994 (b) in good faith preceding that date.[200]

The United States acted quickly to amend domestic trademark law to take these new provisions into account by amending the Lanham Act to add the following provision:[201]

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it consists of . . . a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement . . . enters into force with respect to the United States. [202]

Finally, it should be noted that the even though the United States has not enthusiastically joined previous attempts to institute geographical indication in the European sense, it has not refused to join all geographical indication treaties, even putting aside the limited letter agreement described above concerning Cognac. In fact, relevant agreements stretch as far back as the treaty between the United States and Portugal in 1910, in which the United States agreed to protect the names “Porto” and “Madeira”, as emanating solely from its partner country.[203] More recently, the United States became a party to the North American Free Trade Agreement (NAFTA).[204] Driven by universal demand across the contracting states[205] , NAFTA includes two separate provisions for protecting geographical indications. First, consistent with our international intellectual property agreements, NAFTA article 1712 contains a general provision protecting geographical indication.[206] . Second, Annex 313 to Chapter III on National Treatment, includes very specific protections for distilled liquors as “distinctive products”.[207] In effect, these provisions are nothing less than ad-hoc geographical indications in the European sense – to take the US agreement as just one example, “the United States shall recognize Tecquila and Mezcal as distinctive products of Mexico . . . and shall not permit the sale of any product as Tecquila or Mezcal, unless it has been manufactured in Mexico in accordance with the laws and regulations of Mexico”.[208] When circumstances dictate, in other words, Americans have been willing to give certain products geographical indication protection. The problem, thus far, has been with a general system.

A. Why are European negotiators not satisfied with current United States law?

We have already seen that U.S. law does and has historically provided some serious protections for geographical indications. There is no sense, in other words, that the United States does not understand European concerns on the matter. Nonetheless, European policy makers have continued to express high levels of concern over United States refusal to implement fuller geographical indication protections on an international basis. Though European complaints on this point may initially seem to be merely a preference for their own system over an equivalently protective, but different, U.S system, on further examination their substantive concern turns out to be well placed – though American geographic protections are relatively wide, they do not satisfy some key European demands.

Clearly, the most promising method for European producers of food to protect themselves is through the certification mark system provided by the Lanham Act, as described above in Part III. However, even these relatively generous protections do not reach to the full scope of what European food producers want. Most obviously, if an American already owns a trademark for an item, the European producer is excluded from participation. Second, US trademark law does not protect against similar but non-confusing marks – even if the European producer is able to secure a U.S. certification mark, an American imitator can producer a similar product so long as it does not confuse the customer.[209] But Europeans also object to a system based solely on Certification Marks because some important European brands, protected under European rules, might be judged to be generic under US common law standards, and thus left without any protection at all apart from anti-fraud rules.

The fears that prized European foods would be left without protection in a system that relied solely on Certification Marks are not chimerical. To take one important example, the artisanal producers of Fontina cheese were rejected in their attempts to register a certification mark for their product.[210] Even though Fontina is clearly a traditional Italian cheese, with a very specific formulation and an ancient history, the Patent and Trademark office ruled that it was the equivalent of cheeses previously ruled to be generic, like brie, swiss, parmesan, or mozzarella.[211] Based on a relatively minimal record, in fact, the tribunal held that fontina referred to “a kind of cheese with certain hardness, texture, and flavor characteristics”, rather than anything to do with a specific region.[212] Unsurprisingly, the defeat suffered by the artisanal creators of the true fontina benefited an American domestic imitator – spurring exactly the concerns that the European Union has generally raised in regard to the protection of traditional foods.[213]

As I note above, further, the United States did concede some ground on the issue of wine and spirits in TRIPS Articles 23 and 24, agreeing to a limited international geographical indication scheme.[214] Preliminarily, Europeans were unhappy about the grandfather clause, which exempts some important products from the TRIPS scheme. But even more, Europeans believe that American implementation of the rules that were negotiated is insufficient. As I noted above, TRIPS was indeed integrated into US law with revisions to the Lanham Act, and so explicitly cut off the possibility of calling an American wine “Bordeaux style”, for example. [215] European negotiators have argued, however, that these revisions, by maintaining the confusion requirement imbedded in US trademark law, do not completely protect the interests negotiated in the TRIPS Agreement. As the European Union has put it in official communication,

The amendment to the US Trademark law adopted for the purpose of implementing Articles 23.2 and 24.5 of the TRIPs Agreement creates grounds for refusal or cancellation of a trademark that consists of . . . a geographical indication (GI) which, when used on – or in connection with – wines or spirits, identifies a place other than the origin of the good. . . Thus, it will have to be closely followed whether the US complies with its TRIPs obligations, by ensuring that a trademark registered in bad faith in the US can no longer be maintained where it is identical with or similar to a geographical indication.[216]

These European complaints are no more irrational than their concerns about Certification marks. Indeed, it seems clear that the new US rules do not provide European producers with the protection against non-confusing but similar geographical marks that they sought, just from the express intentions from American negotiators. As one commentator has noted, “The American Bar Association supported the amendments precisely because the confusion requirement was retained”.[217]

Though both sides thought that TRIPS had resolved major question in their favor, the continuing tensions raised by the Europeans above are well demonstrated by examining the history of post-TRIPS negotiations, as required by Article 23(3) – “negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a multilateral system of notification and registration”.[218]

In fulfillment of that obligation, work began in the Council in late 1997.[219] The flow of proposals clearly demonstrates the split in the WTO, with the European Community standing on one side, and the United States on the other.[220] The chief disagreement is equally clear. Simply put, the Europeans believed 23.4 was the opening salvo in negotiation that would inevitably establish a global registration system, requiring participating countries to protect geographical indications in similar ways world-wide. Their proposal envisions a central registration system that looks very much like that in Europe itself, complete with an 18 month period for protests by interested parties.[221] The Americans and their allies have rejected these proposals as too costly, complex, and imposing an undue burden on the WTO and member states.[222] Their response, therefore, has been characterized by a system in which the WTO secretariate is meant to maintain a list of geographical indications throughout participating countries, essentially for information purposes.[223] Under this system, in other words, the United States would make a list of all certification marks available to the WTO – foreigners interested in entering the US market would be able to look at the WTO list and determine whether any geographical indication restricted their plans.

Unsurprisingly, the European reaction to this plan has been less than enthusiastic. Specifically, EC representatives have noted that the list was unlikely to be very helpful at all, and therefore might even fall outside Article 23.4’s exhortation to produce a multilateral system which “facilitates” protection:

[The EC] Delegation was doubtful that the proposal of [the United States et al] was suggesting a system where the protection of geographical indications was in any way “facilitated”. That proposal stated that national authorities would be bound to refer to that list but provided for no mechanism to monitor such obligation to ‘refer’. Further, no effect was attached to the observance of that list, if national authorities looked at it at all. . . Therefore, publishing a list of geographical indications exclusively for information purposes did not guarantee that the protection would be “facilitated”.[224]

There has been no further development on this issue. Indeed, as the WTO Ambassador has reported plaintively every year, differences are still wide, and positions so inflexible that a new draft text has not even been circulated since 2002 .[225] TRIPS, from the European perspective, leaves much to be desired.

Finally, just as the law of 1824 was insufficient for French food producers, Europeans find the 1902 Act (as adopted into the 1906 Act) an incomplete response to their concerns. As seems clear, the act’s anti-fraud provisions, though meant to protect geographical indication[226] , are insufficient because what Europeans would like to stop is the ability of an American producer like Kraft to claim truthfully that its domestic hard grating cheese is called Parmesan.[227] To illustrate this point, Kraft has been obligated by European rules to calls its familiar ready-grated parmesan cheese (in the green tube) “pamesello italiano” in Italy.[228] Though US regulations protect the more specific mark of “parmegiana reggiano”[229] , the cheese giant is welcome to call its product whatever it likes in the United States.

B. The US legal Response

Not content simply to resist application of European style geographical indication law in the United States, American trade negotiators have used legal methods to not only resist, but attempt to drive back existing European law.[230] The most dramatic of all these responses is concentrated neatly in a WTO dispute resolution action against the EC.[231] This litigation, which as of this writing has finally reached the Appellate Body, was instigated first under President Clinton in 1999.[232] The parties attempted to settle the dispute later that year, but the consultations failed to make progress.[233] Five years later, in 2004, the case was briefed and presented, with a series of arguments and documents filed by each side before the WTO’s Dispute Resolution Body.[234]

The US argument has essentially two prongs. Though these are discussed in greater detail in Appendix B, I rehearse them briefly here. First, the United States has argued that it has no obligation to institute a European style protected geographical indication system domestically. Indeed, the US alleges that European PGI regulations, whether or not they are universally available to all members of the WTO, are in clear violation of the TRIPS agreement. Second, the US has claimed that the European regulations are illegal as applied because they violate the so-called “national treatment” obligation by excluding non-European members of the WTO from participation.

The resolution produced by the Dispute Resolution panel is telling, both for what is provides the Americans, and for what it leaves out. First the DRP clearly ruled that the European regulation as written did, as a matter of fact, discriminate against non-European actors - [235] “the panel has evaluated the European Communities’ interpretation of the applicability of the equivalence and reciprocity conditions and not found it reflected in the text of the Regulation”.[236] Because this was true, the panel was then compelled to examine whether this discrimination violated any of the relevant treaties, as the United States claimed.[237] Taking on the substantive issues, the panel then sided with the United States on what seemed like the most important issue – ruling that a system excluding non-EC members of the WTO from PGI status violated the trade agreement.[238]

But the dispute resolution panel did not fully adopt the U.S. position. Most important, they held that the European’s geographic indication scheme was indeed legal, made compatible with trademark by exceptions to the general principle of trademark’s supremacy.[239] After all, the panel concluded, the trademark owner was not completely divested of his right to exclude others from the mark - his power was limited only by a properly registered GI that actually came from the specified geographical zone.[240]

Assuming that this decision is upheld in substantially similar language by the Appellate body, this resolution leaves us in a clear position – the European system of geographical indications is legal, but access must be universal throughout the WTO. The U.S. is thus empowered to continue its resistance to any further developments to geographical indication law on an international level, even while being forced to tolerate the European system. But viewed in a more positive light, American access to European geographical indication protection provides a wonderful opportunity for the United States to reach a favorable settlement of this issue with the European Union, potentially expanding American market share rather than endangering U.S. producers.

V . The Way Forward: A Conclusion

The recent history of debate between the United States and Europe on the matter of geographical indications, as related above, has led some observers to assume that the divide separating the two great trading blocks is unbridgeable. Jim Chen put the matter most starkly, in an article written in the aftermath of the TRIPS agreement – as he argued, “the very idea of an AOC is alien to American law and American culture”.[241] This, he maintained, is because American intellectual property law is built on the foundation of disseminating knowledge as widely as possible, in order to spur innovation and favor new entrants to the market.[242] The European system of geographical indications, however, necessarily dampens innovation in favor of traditional production.[243] In that context, American refusal to negotiate with the Europeans on this matter has not only been a sensible way of protecting American business, but inevitable.

As this paper has shown, however, there is little reason to believe that such a fundamental gap exists between the two systems. Rather, it seems clear that lawmakers in both jurisdictions have reacted broadly similarly to pressures on their agricultural base. As fraud became an increasingly pressing problem at the beginning of the 20th century, both America and France acted to assuage industry concerns by forbidding fraudulent labeling – America lawmakers appeased cheesemakers (primarily) with the 1902 Act, and France its vintners (primarily) with the law of 1905. Both jurisdictions have long protected some geographical indications internationally, though the Americans have preferred ad hoc protections. When justified by industry pressure, both jurisdictions have adopted specific rules protecting specific products – and when the federal government in the United States has not acted, individual states have stepped into the breech, always acting in the context of a fully functional trademark system.

Furthermore, both the European and Americans agree that many marks should not be protected. As I show above, for example, Camembert is protected neither in the United States nor Europe. Just as important, many products protected by the European geographical indication regime simply would be irrelevant to American producers if protected here as well. The famed French cheese Pont L’Eveque , for example, would certainly enjoy protection if we extended TRIPS to include food products other than wine and spirits.[244] But not only was Pont L’eveque previously protected by a now abandoned certification mark[245] , but the great cheese is simply not the sort of product Americans have any interest in imitating.[246] Europeans, furthermore, can be persuaded that some marks are so important that they should not be protected by geographical certification, but rather shared among jurisdictions. In several key examples of bilateral treaties where geographical indications intersect, European negotiators have left tendentious marks off the annexes – only nine cheeses are protected under the Franco-German treaty of 1960 number, [247] for example, while Parmesan itself does not appear in the list of Italian protected products in the Franco-Italian treaty.[248] Rather, Parmigiano Regiano is on the register – but that cheese is also protected by certification mark in American trademark law.[249] The number of agricultural products which would fall under the new rules would be few – and could be reduced through skillful negotiation.

The argument above does not suggest that there are no significant problems with the European regulations, or that they can be adopted as a whole with only specifically negotiated exclusions. Chief among the most worrisome aspects is that European geographical indication protection allows registration of processed foods. The Melton Mowbray discussed at the beginning of this paper, for example, may eventually be challenged as a geographic indication, but not because of its status as a baked pie. But such processed foods are not really the same thing as the magisterial cheese Roquefort, for example. There is nothing about the town in which the food is made, nor about the ingredients used, that makes the resultant food a unique food unworthy of competition.

This concern was well known by the European Commission when it was first preparing the geographic indication regulation. In 1991, when writing the initial regulation, some more conservative members tried to restrict the regulation to “foodstuffs which consist of the first transformation of agricultural products”.[250] Specifically, the amendment was meant to exclude “processed foods such as quiche lorraine”.[251] But the Commission refused to change the initial provision, by a healthy majority – perhaps motivated by a desire to keep these provisions for later international expansion.[252] It is precisely this kind of overbroad protection that does and should continue to worry American negotiators. But it seems equally clear that geographical indication for processed foods is a relatively small issue, and just as susceptible to negotiation as the precise products to be protected.

The real problem, them, is that one of detail. The Europeans want so-called claw-backs on a variety of goods on which Americans believe they also possess an extremely strong claim. US ambitions in this regard are entirely justified. Products like Kraft’s parmesan, as I note above, are just as famous as the original parmesan from Europe. Furthermore, the risk of consumer confusion or dilution of the famed Italian mark is relatively low in these cases – one finds it hard to imagine that anyone believes that the Kraft cheese in the green cylinder is the same as the cheese made by hand in Parma. Though it is true that the level of damage such claw-backs might impose on powerful US brands like Kraft is unclear (and may turn out to be very low – one also imagines that American consumers don’t care what Kraft’s cheese is called, so long as it is inexpensive and consistent) , American concerns that extending geographical indication protection to European levels would “mean substantial losses for the cheese industry” (as well as other industries)[253] are not necessarily just symptoms of stubborn or irrational resistance. Nor is the European position set in stone – as demonstrated by the wide grandfathering provisions in the TRIPS wine and spirits regulations, it seems clear that the European Union is prepared to compromise when they believe the deal suits their purposes.

Ultimately, a deal should be reached on this matter because American products have now become desirable in their own right. On this point, the work of Louis Lenzen as early as 1961 was prescient – recommending adoption of European style geographical indication in America, he noted that:

“it can be maintained as a matter of both authority and principle that scrupulous protection of foreign designations of wine origin in the United states is in accord with America’s national interests. This proposition can be sustained on the basis of precedents [going back to the cases discussed in part II]. . . [T]he day may come, moreover, when the producers of such items as Kentucky Straight Bourbon whiskey, Georgia Hardwood, and Virginia Hams will demands this very sort of protection”.[254]

Lenzen’s prophesied day has come. Americans now have a strong interest in food and cooking. Concurrently, many domestic products have become among the best in the world, Lenzen’s Smithfield hams among them. Europeans have even tried to register the valuable mark of Idaho potatoes without US participation. [255] While we should all have sympathy with the orthodox United States position, it might be time to rethink our stance. With the WTO victory, the basic American legal complaint has been met. What is left is the fear of lost business due to an overweening European system of geographic protections. But we should overcome this concern, for two reasons. In this age of trans-Atlantic trade rancor, a well negotiated PGI agreement - with sufficient protections for the most important American products - would do much to salve the wounds inflicted by the last few years on the European psyche. At the same time, premium American products like Kona Coffee will acquire ironclad international protection, selling for extremely high prices in the food conscious European market.

Ultimately, PGI protection is not a foundational issue for most Americans. Nor will we sacrifice our trademark system if we adopt some sense of European style geographic indication. But for our trans-Atlantic counterparts, the protection of artisanal foods, produced across the generations and centuries, speaks to the very soul of their social order. By giving up some ground on this issue, at low cost to the United States, we can help remove the sting from many anti-American trade objections and improve the condition of our agricultural base. This may not only benefit American produce in the long term, but when the time comes to ask for concessions on other issues we may find European ears more willing to listen to more fundamental U.S. concerns.

APPENDIX A

The Long March of the Melton Mowbray

Even the fondest devotees of Melton Mowbray Pork Pies - rich, bow-walled pastries filled with pork and gelatin - are likely to think of the savories as nothing but salty antidotes to a night at the local pub, consumed hungrily with a few sour gherkins on the side, and remembered drowsily the next morning. Certainly, that was their role in the college pubs of my beloved St. Andrews, in Scotland. And yet, in the summer of 2004, the High Court in London stood poised to hear fraught argument that set the pie’s artisanal producers against the industrial giants Northern Foods PLC. At issue in this unlikely episode was the food’s application for Protected Geographical Indication (PGI) under European law, which would grant those local producers represented by the Melton Mowbray Pork Pie Association exclusive rights over the name of the dish – and would incidentally destroy Northern Food’s right to produce Melton Mowbrays in its factories across England. In this age of slow food and organic prestige, the ideal outcome seems clear to the well intentioned food enthusiast – the local yeoman bakers should be protected against the ravages of their corporate rivals. And yet, the Melton Mowbray stands today at the far end of a complex and ancient history. Knowing more about that story ought to make hungry: and yet, less sure about the rightful path for our heroic pie in the future.

The town of Melton Mowbray, set in rural Lancastershire [X] miles to the west of London, is today almost synonymous with the idea of Pork Pie. Indeed, their intimate connection is the very nub of the dispute in the lofty heights of Britain’s top court. It has not always been so. Indeed, there is no reason to believe that the idea of wrapping pork in pastry is innately Lancastrian, or even English - the most cursory visit to a charcuterie in idyllic Alsace reveals rows of proud pate and saucisse en croute with a history at least as long. To the extent we can trace the idea through British history at all, the trail leads us to a late 18th century work called The Universal Cook, which detailed a small, individual pork pie baked in a dish and hailing from Cheshire.[256] Even the relatively modern Mrs. Beeton’s Book of Household Management suggests that pork pies actually come from the northern county of Warwickshire. Two fortuitous coincidences, however, indelibly forged the relationship between Melton Mowbray and its most famous export. In the first stroke of luck, the district around Melton Mowbray also happens to be the home of Stilton, an ancient blue cheese whose fame stands almost alone in the annals of British culinary history.[257] As the pie’s bureaucratic application for legal protection laconically notes, one of the main by-products of blue cheese production is whey, which makes excellent food for the very pigs that were destined to be encased in the pie’s distinctive free-form pastry.[258] Just as important, the small town was the center of a new amusement just coming to prominence in the mid-18th century, largely among the increasingly wealthy landed aristocracy – hunting with dogs. Easily portable, filling, and groaning tastily with rich gelatin and pork, the pies soon became a favorite picnic for the toney, newly arrived tourists. When the Midland Railway opened a link from the English west to London in 1847, the pie-makers of Melton Mowbray took quick advantage of the opportunity to wing their goods around the country to hunting obsessed consumers, emblazoned with their distinctive name.[259] What was once a local peasant delicacy was turned overnight into the trendy face of English pie-baking: Cheshire and all other competitors for prominence were forgotten in the ensuing wave of enthusiasm.

The fame and money attached to the Melton Mowbray name inevitably spawned fierce competition over its ownership. As early as the 1870’s, pie producers used the burgeoning national press to make their claims – almost every contemporary advertisement suggested that the merchant’s own pies were the “original” product. In [date], however, an enterprising firm named Evans & Hill landed the most telling blow in this valuable game. Elihu Burritt, a visiting American travel writer, happened on Melton Mowbray on his way from London to John O’Groats in the far west. Hearing of the pork pie’s fame, he resolved to visit a factory - and chose that of the aforementioned Evans. Luckily for the small company, Burritt was impressed, and included both town and pie in his resultant travelogue:

Melton Mowbray also has a very respectable individuality. . . [Its fame for as a center of hunting] is a small and frivolous distinction compared with its celebrated manufacture of Pork Pies. . . I visited the principal establishment for providing the traveler and picknicking world with these very substantial and palatable potables. . . I entered the establishment with an eye of as keen a speculation as an exciseman’s searching a building for illicit distillery . . [But] All was above board, fair and clean. The Meat was fresh and good; the flour was fine and sweet; the butter and lard would grace the neatest housewife’s larder; the forms on which the pies were moulded were as pure as spotless marble; the men and boys looked healthy and bright; their hands smooth and clearn, and their aprons white as snow. Not one of them smoked or took snuff at his work . . And the best thing I can say of it is this; that I shall eat with better satisfaction and relish hereafter the pies bearing the brand of EVANS OF MELTON MOWBRAY than I ever did before.

From publication onward, Evans & Hill would miss no opportunity to paste Burritt’s verdict on their advertisements, vaulting them ahead of their local competition. When a newer firm named Dickinson & Morris purchased Evans & Hill in 1851, they took over the leader’s mantle. By the middle of the 20th century, other early bakers had fallen prey to the vagaries of history and family succession. Certainly, a few small producers continued to exist – but when consumers outside the immediate vicinity of Melton Mowbray wanted a pork pie, they turned inevitably to those of Dickinson & Morris.

Today, in the early 21st century, the pork pie has traveled far from its origins as the peasant’s humble lunch, filled and baked by families in the sleepy confines of provincial Albion. By some estimates, the Melton Mowbray Pork Pie market produces an amazing 50 million Pounds of sales every year. And unsurprisingly, the Melton Mowbray Pork Pie association is mostly dominated by the large manufacturers who feed the national hunger for their product.[260] If they missed out on European protection, these formidable companies would simply continue to compete with their peers as they do today. For better or worse, the small bakers whose virtue is draped over the PGI application have long faded into the history of a different, more pastoral, Britain.

Even in that context, the current atmosphere of nostalgic commercialism still suggests to us that this historically rooted but delicious pie should be saved from dilution. After all, another beneficiary of PGI status, Camembert de Normandie, is also usually made by large industrial producers – the delightful image of a Norman cow and its milk maid is today belied by the reality of mass production. But viewed away from the pub’s hazy din, the Melton Mowbray turns out to be rather different than other foods granted legal protection. The great French cheese Roquefort, for example, is rightly shielded from imitation by virtue of the Penecillum Roqueforti’s long and glorious residence in the caves above its namesake village. A blue cheese aged anywhere but in those vaunted hollows may be magnificent, but it can never be Roquefort. But Melton Mowbrays are hardly reliant on their town in the same way – what makes the pie right is not some salutary aura that transfers itself into the pie from the town about it, but a warm dough made both short and crisp in a luxurious wash of lard, filled with a natural mixture of uncured pork, and baked without the support of a dish or pan for a bulgy result - cut open, the Melton Mowbray is a healthy, untinged, grey, and not the industrial version’s artificial pink. In other words, the Melton Mowbray is a pie of technique rather than origin. And the virtue of that technique, it seems to me, could be amply protected for the future by simply requiring anyone who wanted to call their pies “Melton Mowbrays” to make them one by one in the traditional way, rather than limiting the name to a small pocket around one admittedly historic village. But a lot of money hangs off the pie’s golden crown – and I blame no one for seeking advantage.

The Melton Mowbray saga has rumbled on for more than a year now. The law suit was averted, and only recently, British authorities gave final approval to the pie’s PGI application. European decision-makers seem unlikely to object. After more than a century, then, a few local pie-makers will have achieved a long imagined goal - a guarantee that their own larded pastries will stand apart forever from all others, bathed in the glow of a European mark of quality. But in my American home, at least, far from the grips of bureaucratic zealotry, Raffi’s Hand-Raised pork pies will still bear the proud name of Melton Mowbray. The pie is too good to make the province of only one town. By sending the recipe out among the people to try and delight, that promise, at least, can be fulfilled.

Appendix B

Protected Geographical Indication at the World Trade Organization

The US argument before the Dispute Resolution Panel of the World Trade Organization has essentially two prongs. First, the United States has argued that it has no obligation to institute a European style protected geographical indication system domestically. Indeed, the US alleges that European PGI regulations, whether or not they are universally available to all members of the WTO, are in clear violation of the TRIPS agreement.

This argument is based largely on what the United States argues is a fundamental incongruity between Article 16.1 of TRIPS and Article 14 of Regulation 2081/92, which establishes the European PGI rules. Article 16.1 of TRIPS, very simply, is designed to guarantee the international protection of trademark law:

The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. [261]

Article 14 of the European regulation, however, treats the relationship between PGI and trademarks.[262] As the US argues, the objectionable part of Article 14 is not the fact that it establishes geographical indications (which the United States concedes should be on equal footing with other trademarks[263] ), but that it seems to explicitly exclude trademark owners who filed their marks before the geographical indication from enjoying exclusive rights.[264] Article 14(2), specifically, provides that trademarks registered before equivalent GI provisions can continue to be used, but only concurrently with the new geographical indication.[265] This, the United States has argued, is a clear violation of both TRIPS and the principles of intellectual property. “Article 16.1 enshrines a principle of trademark protection recognized in the jurisprudence of both the United States and the EC”[266] – but “Article 14 of the EC GI regulation reinforces that owners of registered trademarks are denied their rights under Article 16.1 of the TRIPS agreement”.[267]

Second, the US has claimed that the European regulations are illegal as applied because they violate the so-called “national treatment” obligation by excluding non-European members of the WTO from participation.

As is well known, “national treatment” is thought to be at the core of international trade agreements[268] - the WTO appellate panel itself has called it “a fundamental principle of the world trading system”.[269] As the US has pointed out, the plain meaning of this obligation is clear – “whatever advantages a Member grants to its own national with respect to the industrial property rights at issue, must also be granted to the nationals of other members”.[270]

The US has argued, therefore, that the European regulations impermissibly limit PGI status to European producers, and therefore violate substantive international law. It is true, the US agrees, that the European regulations do not explicitly restrict non-European registrations.[271] The reality, however, is different. As the United States has argued, the only way for US producers to get access to PGI protection is through Article 12 of the regulation, which requires that the non-European WTO member must both adopt an equivalent GI scheme to that of Europe, and must offer Europe reciprocity.[272] This, the US maintains, is clearly a violation of the national treatment norm – GATT does not allow members to demand reciprocity and equivalency in return for protection.[273]

The EC has made various arguments in response. First, they claim that the United States has misunderstood the empirics – non-Europeans are welcome to apply for PGI protection.[274] Second, Europe has claimed that the EU regulation does not offend the national treatment provisions because it discriminates on the basis of origin rather than nationality – there would be no impediment, Europe as argued, to American producers moving to Europe and receiving PGI protection there.[275] But the US has responded forcefully to these claims, noting that Europe deserves no “deference” on the empirics, as they claim[276] , and that the ECs “national” v. “origin” distinction “does not hold up”.[277]

The resolution produced by the Dispute Resolution panel is telling, both for what is provides the Americans, and for what it leaves out. First the DRP clearly ruled that the European regulation as written did, as a matter of fact, discriminate against non-European actors - [278] “the panel has evaluated the European Communities’ interpretation of the applicability of the equivalence and reciprocity conditions and not found it reflected in the text of the Regulation”.[279] Because this was true, the panel was then compelled to examine whether this discrimination violated any of the relevant treaties, as the United States claimed.[280] Taking on the substantive issues, the panel sided with the United States on the most important, at least superficially – the panel ruled that the system of forcing WTO members to have equivalent geographical indication systems and to offer reciprocal protection was a violation of Article 3.1 of the TRIPS agreement.[281]

On the issue of trademark protection, however, the panel was less positive towards the US position. Though they agreed that the European provisions did violate Article 16.1 of the TRIPS agreement, they ruled that the violation was justified based on Article 17 of the agreement, which allows for limited exceptions.[282] Particularly, the panel found, the GI regulation was a limited exception to Article 16.1 of TRIPS because the trademark owner was not completely divested of his power to exclude others – rather, this power was limited only by a properly registered GI that actually came from the specified geographical zone.[283]


[*] Special thanks go to Professor Hutt, whose class sparked this topic for me

[1] I’m grateful to Mr. Gary Johnston of Pork Farms Bowyers, plaintiffs in the Melton Mowbray case, for contacting me with further information, and some personal anecdotes. E-Mail from Gary Johnston, Pork Farms Bowyers, to Raffi Melkonian, (August 9, 2004, 09:42:38 GMT).

[2] Id . More independent sources, including the articles cited infra n.3, agree that Bowyers would suffer considerable harm from the geographical protection.

[3] See Appendix A. See also the current developments in the case; Legal Action Threatened over Pork Pie Protection Bid, GROCER, April 23, 2005; Richard Tresidder, Pork Pie Makers in Court Showdown , NOTTINGHAM EVENING POST, April 22, 2005; Company Continues Battle Over Name of Pork Pies , BATH CHRONICLE, April 21, 2005.

[4] Lori E. Simon, Appellations of Origin: The Continuing Controversy , 5 NW. J. INT’L L. & BUS. 132, 137 (1983); Danielle B. Shalov, 11 Cardozo J. Int’l & Comp. L. 1099, 1111.

[5] Albrecht Conrad, The Protection of Geographical Indications in the TRIPS Agreement 86 TRADEMARK REP . 11 (1996); For South America, see Ernesto D. Aracama-Zorrquin, The Protection of Geographic Indications in South America , in Cohen Jehoram, PROTECTION OF GEOGRAPHIC DENOMINATIONS AND SERVICES (1980).

[6] See Paul Roubier, 2 LE DROIT DE LA PROPRIETE INDUSTRIELLE 65 (1954); see also Jeffrey Belson, Certification Marks (2002) 16.

[7] Paul Roubier, the definitive scholar of French intellectual property law, provides a brief discussion of the history of intellectual property, beginning in England. He contrasts the early English development to what he sees as the slow and anachronistic development in France. It should be noted, however, that Roubier is writing in a deep tradition of disdain among modern French observers of anything that preceded the Revolution – the ancient regime, in this story, is thought to have been a muddle of sclerotic elite interests, all swept away by the cleansing experience of the Revolution. More modern historical analysis has started to revise the traditional depiction of pre-revolutionary France as a sort of feudal museum. But Roubier almost certainly right that the corporations were not an ideal method of intellectual property protection. Paul Roubier, 2 LE DROIT DE LA PROPRIETE INDUSTRIELLE 65 (1954).

[8] We have never discerned exactly what the first name of Mr. Boulanger is supposed to have been. Prosper Montagne, LAROUSSE GASTRONOMIQUE 806 (1ST American ed., 1964)

[9] See id. at 807.

[10] Rebecca L. Spang, THE INVENTION OF THE RESTAURANT ch. 1 (2000).

[11] See id.

[12] See Paul Roubier, 1 LE DROIT DE LA PROPRIETE INDUSTRIELLE 64- 65 (1954). For additional, fascinating information about the a guild based system of food regulation, see Peter Barton Hutt, A History of Food Regulation, 39 FOOD AND DRUG L.J. 2, 26 (1984).

[13] See Roubier, supra note 12.

[14] See a brief history of the German beer purity laws in Markus G. Puder, Phantom Menace or New Hope: Member State Public Tort Liability After the Double Bladed Light Saber Duel Between the European Court of Justice and the German Bundesgericht in Brasserie de Pecheur , 33 VAND. J. TRANSNAT’L L . 311, n.4; See also Case 178/84, Commission v. Federal Republic of Germany, 1987 E.C.R. 1227, (1988) 1 C.M.L.R. 780.

[15] See Roubier, supra note 6, at 755.

[16] See id. . (“En dehors de la loi du 22 Germinal an XI sur les marques (art. 17) qui visait deja l’emploi irregulier d’un nom de lieu de fabrication inexact, loi qui ne put pas etre appliqué a cause de l’excessive rigueur de ses sanctions . . . “).

[17] See id.

[18] Id.

[19] See Roubier, supra note 6 at 755.

[20] Id. at 815.

[21] Id. at 755.. This continues to be true. See Chavanne, Albert & Jean-Jacques Burst, DROIT DE LA PROPRIETE INDUSTRIELLE (4th edition, 1993).

[22] See Roubier, supra note 6 at 814.

[23] See id. at 756.

[24] See Chavanne, supra note 21, at 795 (“Dans le dessein de proteger le consommateur, l’article 11 de cette loi prevoyait que des reglements d’administration publique devaient determiner les produits qui auraient droit a une appellation d’origine”).

[25] Peter Barton Hutt & Richard A. Merrill, FOOD AND DRUG LAW 8 (1991) (“As has often happened in the history of food and drug regulation, a tragedy intervened to spur the enactment of the first national statute”).

[26] Norbert Olszak, DROIT DES APPELLATIONS D’ORIGINES ET INDICATIONS DE PROVENANCE 6 (2001).

[27] See id.

[28] See generally, Gordon Wright, RURAL REVOLUTION IN FRANCE (1964).

[29] Average production per year from 1890-1900 in the Midi (in hectoliters) was 16,620,977. By 1900, this figure had reached 27,942,871. Obviously, these numbers do not take into account imports. See Leo, A. Loubere, RADICALISM IN MEDITERRANEAN FRANCE 187 (1974).

[30] See, e.g., id. at 184 (1974). For an interesting discussion of how such wine is made, see Guy Bechtel, 1907: LA GRANDE REVOLTE DU MIDI 24-28 (1976) .

[31] See, e.g., Emmanuel La Loy Ladurie, HISTOIRE DU LANGUEDOC 117 (1962).

[32] Despite Clemenceau’s effort to argue that it was the vignerons fault for not enforcing the law through suit often enough. See Letter from Georges Clemenceau to the resigning mayors, Felix Napo, 1907: LE REVOLTE DES VIGNERONS 237 (1971).

[33] LaDurie says that 6 million hectoliters arrived from Algeria alone in 1906. See Ladurie, supra note 31, at 116.

[34] Napo says that in 1880, a wine of Carcassonne brought 32.50 francs on the market. By 1906, the same wine fluctuated between 9 and 14 francs. See Napo, supra note 32, at24 (1971).

[35] See Loubere, supra note 29, at 188.

[36] See id.

[37] The steps Clemenceau took really were not very impressive. He “curtailed expropriations, made available sums to prime the pumps of local credit bureaux, and created a parliamentary committee to study the wine crisis”. See id. at 19.

[38] See Olszak, supra note 26, at 7. See also J. Harvey Smith, Agricultural Workers and the French Wine Grower’s Revolt of 1907, PAST AND PRESENT (1978).

[39] See Smith, supra note 38, at 112.

[40] See id.

[41] Quoted in Ladurie, supra note 31, at 117 (1962).

[42] Man who has Aroused Southern France , N.Y TIMES , June 23, 1907 at SM3.

[43] The songs and chants of the demonstrators betray the frankly revolutionary rhetoric of some parts of the protesting group. Set to the tune of the Marseillaise, for example, the wine growers sang, “Forward, viticulteurs, Our country dies! Unite! And cry together, for bread to the wine growers”!. Quoted in Napo, supra note 32, at229. See also Bechtel, supra note 39, at 9, for Albert’s nickname.

[44] See Smith, supra note 38, at 118.

[45] Letter from Georges Clemenceau to the resigning mayors, reprinted in Napo, supra note 32, at appendix. The letter begins as follows: “I must inform you that I have given the order to not accept your resignations. See in this decision not the a governmental whim, but the well reasoned desire to present a damaging administrative disorganization which would harm the common good of your region, as well as that of the particular commune where you are in charge”.

[46] Messiah of the Midi Talks, N.Y TIMES , June 16, 1907 at C3; Albert Issues a Sharp Decree, N.Y. TIMES , June 16, 1907, at C3.

[47] See Smith, supra note 38, at 118. In an astonishing point of historical congruence, this is precisely the tactic used by the Kings of France to deal with the almost unbroken string of peasant revolts in Languedoc from the early middle ages till the rise of the First Republic. Louis XIII particularly had the drill down pat. One should note, however, the historical development of French government – 17th century reactions to peasant revolt usually required the personal intervention of the monarch on the field of battle. The democratically elected Clemenceau was, more or less, able to take military action from Paris itself.

[48] See Messiah, supra note 46.

[49] The unfortunate soldiers were later sent on extended tours of duty in North Africa as punishment for their disloyalty. As a matter of practicality, though, one wonders if they were really very blameworthy. Loubere, supra note 29, at 193.

[50] Marcelin Albert, N.Y.TIMES , June 24, 1907 at 6. See also Bechtel, supra note 30, at 289 for the note Albert prepared for Clemenceau’s interior secretary. This source also provides the dialogue between “The Redeemer” and Clemenaceau (known as “The Tiger”), but it is completely unclear what the source for these details is.

[51] Napo, supra note 32, at 158 (1971)

[52] See Marcelin , supra note 50.

[53] Napo, supra note 32, at 158.

[54] See Marcelin , supra note 50.

[55] See id .

[56] See Wright, supra note 28, at 28 n*; Albert apparently only had 50 Francs left on him from the 100 he had borrowed to travel to Paris. Napo, supra note 32, at 160.

[57] See id. at 165. .

[58] As one editorial noted, in reference to Albert’s striking naiveté – “Albert is a giant child. . . The role he has assumed is beyond his abilities . . . Marcelin, with is simple mentality, committed the fault of believing an extremely complex being”. (i.e, Clemenceau). Quoted in id. at 169..

[59] Albert a Fallen Idol, N.Y TIMES , August 11, 1907, at C2.

[60] Law of August 5, 1908. See Roubier, supra note 6.

[61] See Olszak, supra note 26, at 7.

[62] See Chavanne, supra note 21, at 793.

[63] See Olszak, supra note 26, at 8.

[64] See id.

[65] See id. .

[66] See Chavanne, supra note 21, at 793

[67] See id. See Decree of December 17, 1908, on the appellation champagne, and Decree of February 18, 1911, on the appellation Bordeaux.

[68] See Simon, supra note 4, at 138.

[69] See below.

[70] Law of May 6, 1919; See also , Chavanne, supra note 21, at 796.

[71] See id.

[72] See id.

[73] See id.

[74] See id. at 795. The key is a geographic tie to the purported appellation, rather than a specific location.

[75] See id. at 798;.

[76] See id. at 199.

[77] Pierre Boisard, CAMEMBERT ( Richard Miller, trans. 2003) .

[78] See id. at 85.

[79] See id. at 180.

[80] See id. at 181

[81] See id. ;

[82] Roquefort was granted AOC protected by the Court at Saint-Affrique on December 22, 1921; See id. .

[83] See the registration for Camembert de Normandie available at http://europa.eu.int/comm/agriculture/qual/en/111_en.htm . Registered by Syndicat Interprofessionnel de Défense de l'AOC Camembert de Normandie.

[84] See Boisard, supra note 77, at 185; Decree of 1983, J.O., 2 September 1983, p. 2699.

[85] See Olszak, supra note 26, at 131.

[86] 1991 O.J. (C 269) 63

[87] 1991 O.J. (C 30) 04.

[88] 1992 O.J. (L 208) 1.

[89] See id. at art. 2, 2(b).

[90] See id. at art. 2, 2(a)

[91] See, e.g., Alan Davidson, THE OXFORD COMPANION TO FOOD (1999) 670 .

[92] See EU Regulation, No 2082/92, art. 4(1)

[93] Compare the Protected Designation of Origin product, Mozzarella di Bufala Campana OJ L 148, 21.6.1996, p. 1, with the certificate for Mozzarrella, available at http://europa.eu.int/comm/agriculture/qual/en/1141_en.htm.

[94] An excellent source providing explanations of these European regulations is available for public use at the website of the European Commission, available at http://europa.eu.int/comm/agriculture/publi/gi/broch_en.pdf.

[95] See EU Regulation 1493/99.

[96] See http://europa.eu.int/comm/agriculture/publi/gi/broch_en.pdf .

[97] Protecting Food Names, Guidance on EC Regulations , at http://www.defra.gov.uk/foodrin/foodname/guidance.pdf

[98] Id.

[99] Id.

[100] Id.

[101] See e.g., Jim Chen, A Sober Second Look at Appellations of Origin: How the United States will Crash France’s Wine and Cheese Party 5 MINN. J. GLOBAL TRADE 29, 58 (1996) (arguing that geographical indication in the European sense is incompatible with American tradition and law). See also Stacy D. Goldberg, Who Will Raise the White Flag: The Battle between the United States and the European Union over the Protection of Geographical Indications, U.PA. J. OF INT’L ECON. L . 107, 108 (2001). But see, e.g., Joseph Patrick Carroll, Exporting Wine through the Barricades of Fortress Europe, 11 Transn’l Law.429, 448 (arguing, as I do to some extent, that European regulations and ambitions in terms of geographic indication are sensible extensions of history).

[102] Though these cases are well known, I credit Louis C. Lenzen, Bacchus in the Hinterlands: A study of Denominations of Origin in French and American Wine-Labelling Laws 58 TRADEMARK REP ., 145, 146 for its excellent analysis. The case seems to otherwise stand as precedent for interpreting s. 43 of the Lanham Act. See Joseph Bauer, Federal Law of Unfair Competition, What should be the reach of Section 43(a) of the Lanham Act? 31 UCLA L. Rev. 671, 675-76.

[103] Pillsbury-Washburn Flour-Mills Co. v. Eagle, 82. F. 816 (N.D. Illinois, 1897), rev’d by 86 F.608.

[104] See id. at 816-17.

[105] Pillsbury-Washburn Flour Mills Co. v. Eagle, 86 F. 608 (1898).

[106] See id. at 609.

[107] See id. at 608. Lenzen, supra note 102, at 146 uses the same citations.

[108] See Pillsbury-Washburn , 86 F. at 608.,

[109] See id. at 627.

[110] To take one example, Judge Morris ruled in California Fruit Canner Ass’n v. Myer (a similar case involving California pears) that “this is a clear caser of fraudulent competition by the use of a geographical name which the complainants are entitled to use, but the respondents are not. It is true that no one single packer can acquire an exclusive right to use, as a private trade-mark, ‘California Pears’, or ‘California’ as a label on canned pears; but all persons who put up California grown pears in California have a right to use it”. 104 F. 82 (D. Maryland, 1899).

[111] See generally, Hutt & Merrill, supra note 25; See also Lorine Swainston Goodwin, THE PURE FOOD, DRINK, AND DRUG CRUSADERS 62 (1999).

[112] See Hutt & Merrill, supra note 25, at 7. For example, “Lemeul Shettuck’s landmark report on public health in 1850 documents the decrease in average life expectancy at birth in America’s large urban centers and identified the adulteration of food and drugs as a matter of public health concern”. See also Professor Hutt’s longer explication of this phenomenon in Peter Barton Hutt, History of the Regulation of Food, 39 FOOD AND DRUG JOURNAL 2, 39 (1984). Note particularly Professor Hutt’s coverage of health based regulation of food on the state level, which undoubtedly was one of the driving forces of these statutes.

[113] See id. at 8.

[114] See Goodwin, supra note 111, at 67.

[115] 1881 N.Y. Laws 300.

[116] 1884 N.Y. Laws 202, s.7.

[117] 1881, N.Y. Laws c. 300, s.1,2,3,4.

[118] See id. at s. 3.

[119] 1885, N.Y. Laws c. 183; 1885, N.Y. Laws, c.193, s. 7.

[120] McKinney’s Agriculture and Markets Laws, s. 67.

[121] Ranging from “Full Cream” to “One-Fourth Cream”. 1897 P.a. Laws 164, p. 202.

[122] See id. The requirements were expanded to the cheese box in 1901. See 1901 P.a. Laws 95, p. 128. .

[123] 1893 Wis. Laws., c. 228, at 189.

[124] See Goodwin, supra note 111.

[125] Id.

[126] 1893 Wis. Laws., c. 228, at 189.

[127] See Goodwin, supra note 111. As Goodwin argues, there were massive efforts by women, the New York Times, and other protagonists to forward reform beginning in 1903.

[128] See 32 Stat. 632, July 1, 1902.

[129] See H. David Gold, 59 Food and Drug L. J. 93, 95 (2004).

[130] H.R. REP No. 258 (1901).

[131] Adulteration of Food Products 56th Cong. (1899) (statement of Maurice H. Scully, manufacturer, Scully Sirop Co.)

[132] H.R. REP No. 258 (1901).

[133] Id.

[134] 24 U.S. Op. Atty. Gen. 125 (September 20, 1902).

[135] 24 U.S. Op. Atty. Gen. 695 (June 22, 1903).

[136] 24 U.S. Op. Atty. Gen. 675 (June 18, 1903).

[137] S. REP No. 869 (1902).

[138] See id.

[139] See id.

[140] Adulteration of Food Products 56th Cong. 568 (1899) (statement of Benjamin Rippen, champagne producer, Ripen & Co.)

[141] Arthur P. Greeley, THE FOOD AND DRUGS ACT, A STUDY 44 (1906).

[142] See id.

[143] See infra p. 30

[144] See Greeley, supra note 141, at 44.

[145] As I say, there are numerous cases. For the moment, however, see United States v. 100 Cases of Tepee Apples, et al 179 F. 985 (W.D. Missouri, 1908) (holding that labeling Arkansas fruits as Michigan fruits might mislead consumers who prefer Michigan); United States v. Five Cases of Champagne 205 F. 817 (N.D.N.Y, 1913) (holding that carbonate white wine labeled to look like champagne is misbranded); But see, United States v. Thirty-Six Bottles of London Dry Gin 205 F. 111 (E.D.P.A. 1913) (holding that labeling gin as “London Gin” is not misbranding);

[146] See also Committee of Roquefort v. Faehndrich, 303 F.2d 494, 496; Jeffrey Belson, CERTIFICATION MARKS 16 (2002).

[147] J. Thomas McCarthy, 3 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION s.19.91

[148] See Albrecht, supra note 5, at 11, makes this point in his discussion of geographical indications and the American model.

[149] Id. at s. 19.91

[150] U.S. Trademark, No. 0571798 (issued February 13, 1952)

[151] See Roquefort 303 F.2d at 494..

[152] Institut National Des Appellations D’origine v. Brown-Forman Corp 47 U.S.P.Q.2d 1875 (T.T.A.B. 1998).

[153] Ga. Code. Ann. s. 2-14-132.

[154] There is a fascinating discussion of Minnesota wild rice in Robb Walsh, ARE YOU REALLY GOING TO EAT THAT? (2003).As Walsh notes, “cultivated wild rice began to hit the market in the late 1960s, when Minnesota farmers first succeeded in growing wild in conventional rice paddies, where it could be harvested with combines. Rice farmers in California soon followed suit, and within ten years farmers were producing ten times more wild rice than was harvested in the wild. Today, nearly all the wild rice found in grocery stores is cultivated commercially”. See also , Thomas Vennum Jr., WILD RICE AND OJIBWE PEOPLE (1988). See also the state statute in Minnesota, M.S.A. s.30.49.

[155] R.W. Apple, Jr. Americana, Salted, Smoked, and Sliced Thin , (New York Times, March 23, 2005) (“State law still specifies that only hams "cured, treated, smoked and processed in the town of Smithfield" may be sold as genuine Smithfield hams. What that means in practice is that they must be produced in the factory of Smithfield Foods, which owns the only remaining smokehouse in town. Whatever the label says - Joyner, Luter, Amber, Gwaltney or whatever - all Smithfield hams are made in that one plant from hogs that are raised to Smithfield Foods' specifications, here and in North Carolina.

[156] F.S.A. 865.02

[157] Gerald Y. Kinro, A CUP OF ALOHA, THE KONA COFFEE EPIC 7 (2003). For general information about Kona Coffee, the Kona Coffee Association’s website is also of interest, at http://www.koacoffee.com/aboutkona.html

[158] See id. at 8; See also the useful timeline at http://www.koacoffee.com/coffeehistory.html .

[159] See id. .

[160] Daniel M. Slate & Shelley M. Mark, ECONOMIC STUDY OF THE KONA COFFEE INDUSTRY AND A PROGRAM FOR IMPROVEMENT (1959)

[161] See id. at 8.

[162] See id. .

[163] See Kinro, supra note 157, at 103.

[164] See id.

[165] See id.

[166] See id. at105.

[167] HAW. REV. STAT. 486-120.6 (1992). Note that the newest revision of the statute, Haw. Rev. STAT. 486-120.6 (2002) extends protection to all Hawaii-grown coffee, presumably leaving geographical indication protection of Kona to certification marks.

[168] Kinro supra note 157, at 111. For some useful background to the 1996 Kona Coffee scandal, see, e.g., Russ Banham, Kona scandal prompts industry to seek ways to avoid getting burned by fraud,
Grower accused of substituting beans , JOURNAL OF COMMERCE, February 27, 1997 at 6A; Thai Walker, Coffee Bean Wholesaler Denies Fraud, SAN FRANCISCO CHRONICLE, November 28, 1996 at A24. Despite these efforts to improve statutory protection for Kona Coffee, concerns still remains – particularly, how are Kona coffee producers to protect their product outside Hawaii? See Les Drent, The Downfall of Kona Coffee: Can our Local Industry Sustain Itself? COFFEE TIMES (1999), available at http://www.coffeetimes.com/downfall.htm .

[169] Kinro, supra note 157, at 111. See also the actual Certification Mark for Kona Coffee – U.S. Trademark, No. 2322867(2000).

[170] Greeley, supra note 141, at 45.

[171] Less colloquially, it is known as the “Agreement of Madrid for the Prevention of False of Misleading Indications of Source on Goods, as revised at Lisbon, 1958”.

[172] See id. , at art.1(1).

[173] Known fully as the “Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration, as revised at Stockhold, 1967.

[174] Lisbon Agreement, Art. 11.

[175] Lisbon Agreement, Article 5.

[176] World Trade Organization, Overview of Existing International Notification and Registration Systems for Geographical Indications Relating to Wines and Spirits 5 (November 17, 1997).

[177] This agreement is referred to as “the model” in id. . Appellations d'origine et dénomination de produits agricoles et industriels October 5, 1974, Fr. – Austria; Appellations D’Origine , October 25, 1968, Fr. – Cuba; Appellations d'Origine et Denominations, June 27, 1973, Fr. – Sp. ; Appellations d'origine April 28, 1964, Fr. – Ital.

[178] Agreement between the Federal German Republic and France, available at http://www.doc.diplomatie.gouv.fr/BASIS/pacte/webext/bilat/SDF

[179] See, e.g., Art. 2, Agreement between the Federal German Republic and France, available at http://www.doc.diplomatie.gouv.fr/BASIS/pacte/webext/bilat/SDF.

[180] Appellations D'Origine , August 8, 1960, Fr.- F.R.G. available at http://www.doc.diplomatie.gouv.fr/BASIS/pacte/webext/bilat/SDF . Annex A and Annex B.

[181] See id. at Annex B.

[182] See, e.g., id .at art. 9.

[183] See above.

[184] The treaty protects only “Cognac”, “Armagnac”, and “Calvados” in the United states, and only “Bourbon” and “Bourbon Whisky” in France. Accord par échange de lettres relatif à la protection en France des appellations d'origine "Bourbon" et "Bourbon Whisky" et aux États-Unis d'Amérique des appellations "Cognac", "Armagnac" et "Calvados , June 11, 1971. U.S. -Fr.

[185] TRIPS. See infra note 197 and accompanying text.

[186] General Agreement on Tariffs and Trade (GATT), art. IX:6.

[187] Daniel J. Gervais, THE TRIPS AGREEMENT , 6 (2003).

[188] Japan – Customs Duties, Taxes, and Labelling Practices on Imported Wines and Alcoholic Beverages. Document, GATT BISD 34S/83.

[189] Id. .

[190] Id. .

[191] Id. .

[192] Id.

[193] See Gervais, supra note 188, at 6.

[194] See Albrecht, supra note 5, at 29 (“the fact that Articles 22-24 finally became part of the TRIPS Agreement was essentially due to the persistent endeavors of the EC and Switzerland, which pushed for the topic to be placed on the agenda of the TRIPS negotiations”). See also Submissions from Participants on Trade Problems Encountered in Connection with Intellectual Property Rights , GATT Doc. MNG.GNG/NG11/W/7 at 2; excerpts from the EC endorsement of protection for indications of origin are reprinted in Terence P. Stewart, ed., 2, THE GATT URUGUAY ROUND, A NEGOTIATING HISTORY , 2302, fn. 399.

[195] See May 11, 1990 (GATT doc. MTN.GNG/NG11/W/70); reprinted in 10 WIPR 128 (1990). (“Contracting Parties shall protect geographical indications that certify regional origin by providing for their registration as certification or collective marks”).

[196] TRIPS, art. 22.

[197] TRIPS, arts. 22 & 23.

[198] See Albrecht, supra note 5, at 11; Submissions from Participants on Trade Problems Encountered in connection with Intellectual Property Rights , GATT Doc. MNG.GNG/NG11/W/7, at 2; excerpts from the EC endorsement of protection for indications of origin are reprinted in Stewart, supra note 195 at 2; Guidelines proposed by the European Community for the Negotiations on Trade-Related Aspects of Intellectual Property Rights , GATT Doc. No. MTN.GNG/NG11/W/16 (Nove. 20, 1987); Status of Work in the Negotiating Group , Doc. Ref. No. 2341 (Oct. 1, 1990); Draft Final Act Embodying the Results of the Uruguay Round of Multilateral Trade Negotiations , GATT Doc. No. MTN.TNC/W/FA (Dec., 20, 1991).

[199] TRIPS, art. 23(1).

[200] TRIPS, art. 24(4).

[201] H.R. Rep. 103-826(I) (“Trademark Provisions. – the trademark subtitle. . . prohibits registration of a misleading geographic indication identifying wines or spirit”).

[202] 15 USC 1052(a).

[203] Albrecht, supra note 5; U.S. - Portugal, T.S. No. 514 1/2.

[204] North American Free Trade Agreement (NAFTA).

[205] Subcommittee on Trade, Hearing on the World Trade Organization , (Statement of F.A. Meiste,r President and CEO of the Distilled Spirits Council of the United States) (February 26, 1997). Meister’s testimony demonstrates that US distilling interests were instrumental in pushing both geographical indication protections both in the eventual TRIPS agreement and in NAFA. I discuss this in Part V.

[206] NAFTA, art. 1712. This provision clearly foreshadows the general provision included in TRIPS. As James R. Holbein & Donald J. Musch, NAFTA, FINAL TEXT, SUMMARY, LEGISLATIVE HISTORY, & IMPLEMENTATION DIRECTORY (1994) summarize the provision, “[e]ach party will provide the legal means for interested persons to prevent the use of any means in the designation of a product that misrepresents its place of origin or any use that constitutes unfair competition under Article 10 of the Paris convention”.

[207] NAFTA, Annex 313. Reprinted in Holbein & Musch, supra note 207, at 158.

[208] NAFTA, Annex 313.

[209] The Europeans have made these objections explicit in a trade document entitled Why do Geographical Indications Matter to Us? at http://europa.eu.int/comm/trade/issues/sectoral/intell_property/argu_en.htm . As they argue, “The WTO rules provide for insufficient protection. For example, rules exist but are not sufficiently enforced to prevent an Australian producer to label a spirit drink with a Scotsman with a pipeflute so the consumer believes that the spirit is actually “Scotch Whiskey”. To make matters worse, products other than wines & spirits such as tea, rice, carpets, cheese or porcelain of particular interest for developing countries are overtly discriminated under WTO rules. Indeed, while one cannot label a US wine “style of Rioja”, nothing prevents a US producer to label a cheese “Style of Manchego” as long as he/she indicates that the product is “made in the USA”. For the latter case, the consumer is facing contradictory information as one of the elements clearly evokes Spain, where as the other points to a US origin. Consumer choice may be further complicated if "made in USA" is only indicated in smaller characters on the label. . . .Furthermore, under the current WTO rules, any US producer can register as a trademark “Manchego made in USA”. To give an example, more than 150 EU GIs have been registered as trademarks by the Argentinean producers”. For the basic legal doctrine, see Jane C. Ginsburg, et al. TRADEMARK AND UNFAIR COMPETITION LAW (1996) 427.

[210] In Re Cooperativa Produttori Latte E Fontina Valle D’Acosta (1986) 230 U.S.P.Q. 130.

[211] See id. , at 134.

[212] See id.

[213] In Re Cooperativa Produttori Latte E Fontina Valle D’Acosta (1986) 230 U.S.P.Q. 130, 133. But see, In Re Montrachet 878 F.2d 375. Also cited in WL 285158 (cognac).

[214] TRIPS, art. 23 & art. 24.

[215] 15 USC 1052(a).

[216] European Commission, 2004 REPORT ON US BARRIERS TO TRADE AND INVESTMENT , 67; See also European Commission, 2001 REPORT ON US BARRIERS TO TRADE AND INVESTMENT 45 ( making literally identical claims).

[217] Paul J. Heald, Trademark and Geographical Indications 29 VAND. J. TRANSNAT’L L . 635, 652 (1996).

[218] TRIPS, art. 23(4).

[219] WTO, Overview of Existing International Notification , IP/C/W/85 (November 17, 1997) (“At its meeting of 27 February 1997, the Council agreed to initiate preliminary work on issues relevant to the negotiations specified in Article 23.4 of the TRIPS agreement through an information-gathering activity”).

[220] See, e.g., The European Communities and Their Member States, Proposal for a Multilateral Register of Geographical Indications for Wines and Spirits based on Article 23.4 of the TRIPS Agreement IP/C/W/107 (July 28, 1998), Communication from the European Communities and their Member States; Japan and the United States, Proposal for a Multilateral System for Registration and Notification of Geographical Indications IP/C/W/133 (March 11, 1999); The European Communities and Their Member States, Implementation of Article 23.4 of the TRIPS Agreement Relating to the Establishment of a Multilateral System of Notification and Registration of Geographical Indications Revision IP/C/W/107/Rev.1 (June 22, 2000); The European Communities and Their Member States, Establishment of a Multilateral System of Notification and Registration of Geographical Indications under Article 23.4 of the TRIPS Agreement — Comments on the Proposal Jointly Submitted by Canada, Chile, Japan and the United States (May 30, 2001).

[221] The European Communities and their Member States, Establishment of a Multilateral System of Notification and Registration of Geographical Indications under Article 23.4 of the TRIPS Agreement — Comments on the Proposal Jointly Submitted by Canada, Chile, Japan and the United States IP/C/W/260 (May 30, 2001).

[222] Japan and the United States, Proposal for a Multilateral System for the Notification and Registration of Geographical Indications, IP/C/W/133 (March 11, 1999).

[223] Id.

[224] WTO Secretariat, Minutes of Meeting June 28, 2002 , TN/IP/M/2 (August 26, 2002).

[225] WTO Chairman, 7th Special Session for TRIPS, Report by Chairman, Ambassador Eui-Yong Chung , TN/IP/7 (July 4, 2003); See also similar reports earlier in the year; WTO Chairman, 6th Special Session for TRIPS, Report by Chairman, Ambassador Eui-Yong Chung , TN/IP/6 (May 5, 2003); WTO Chairman, 5th Special Session for TRIPS, Report by Chairman, Ambassador Eui-Yong Chung , TN/IP/5 (February 28, 2003);

[226] As I show in Part III.

[227] See, e.g ., Hearing of the House Agricultural Committee, Hearing of the House Agricultural Committee (statement by Bob Goodlatte, member, U.S. House of Representatives) (May 19, 2004).

[228] Hearing of the House Agricultural Committee, Hearing of the House Agricultural Committee , (statement by Bob Goodlatte, member, U.S. House of Representatives). (April 28, 2004).

[229] Hearing of the House Agricultural Committee, Review of Geographical Indication in the World Trade Organization Negotiations (statement by Mr. Jon W. Dudas, Deputy Under-Secretary of Commerce for Intellectual Property) (“MR. DUDAS: . . . Roquefort cheese has been registered and protected in the United States since 1953. Registered and certainly could have been protected under a common law before that. And you point out, parmesan cheese is generic in the United States, but permegiana reggiano is a protected geographical indication”.) (July, 23, 2003).

[230] There has been almost no positive response from within the United States in favor of adopting European style geographical indications.

[231] The cases are designated as United States v. European Communities WT/ DS 174 & Australia v. European Communities WT/DS 290.

[232] Request for Consultations by the United States WT/DS174/1 (June 1, 1999); WALL STREET JOURNAL , May 3, 1999: (“The Clinton Administration, in an annual review of unfair trading practices that affect U.S. exports, said it will ask the World Trade Organization to review trade rules of the European Union . . . . In Seven WTO cases launched Friday, the U.S. Trade Representative’s office said it would . . . ‘Seek WTO consultations with the EU on regulations concerning the protection of geographical indications for agricultural products and foodstuffs’. It said the EU rules violate a WTO agreement on Trade-Related Aspects of Intellectual Property Rights”).

[233] First Submission of the United States, WT/DS174 (April 23, 2004), 2; Press Release, The Office of the United States Trade Representative, 4/4/03, U.S. Announces Further Consultations in WTO Dispute with EU over Geographic Indications . (“Since first initiating this case in 1999, the United States Government and U.S. Industry have sought to negotiate an acceptable resolution to our concerns through every available means. Unfortunately, these efforts have thus far failed to resolve the issue. While the EU has proposed making some changes to its regulations, it has not agreed to address our principal concerns with respect to full national treatment and appropriate protection for trademarks”).

[234] A full record of submissions by each side is available at http://www.ustr.gov/Trade_Agreements/Monitoring_Enforcement/Dispute_Settlement/WTO/Dispute_Settlement_Index_-_Pending.html for the United States, and http://trade-info.cec.eu.int/doclib/cfm/doclib_type.cfm?type=4 for the European Union.

[235] European Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - Complaint by the United States - Report of the Panel, WT/DS174/R, 38 (7.103).

[236] Id.

[237] Id . The panel did not that if the European Union’s arguments that the regulation’s text didn’t reflect reality were accepted, obviously, such further investigation would not have been necessary – “Had this interpretation been reflected in the text of the Regulation, the Panel could have reached a different conclusion which would have rendered it unnecessary to continue with an examination of the consistency of those conditions with the provisions of the covered agreements”. Id.

[238] Id. at 38, 165.

[239] See id. at 146.

[240] See id. at 145.

[241] Jim Chen, A Sober Second Look at Appellations of Origin: How the United States will Crash France’s Wine and Cheese Party 5 Minn. J. Global Trade 29, 58 (1996).

[242] Jim Chen, A Sober Second Look at Appellations of Origin: How the United States will Crash France’s Wine and Cheese Party 5 Minn. J. Global Trade 29, 58 (1996).

[243] See id.

[244] Pont L’Eveque is registered as a European Protected Designation of Origin. available at http://europa.eu.int/comm/agriculture/qual/en/129_en.htm .

[245] U.S. Trademark, No. 1233775 (1983, dead).

[246] See Davidson, supra note 91, at X.

[247] See Appellations, supra note 180.

[248] See Appellations, supra note 177.

[249] U.S. Trademark, No. 2320595 (1999).

[250] 1991 O.J. (C 269) 65.

[251] Id.

[252] Id. The vote was 50 for, 65 against, with 9 abstentions.

[253] Hearing of the House Agricultural Committee, Review of Geographical Indications in the World Trade Organization Negotiations, (July 22, 2003) (Statement of Thomas M. Suber, President, U.S. Dairy Export Council).

[254] See Lenzen, supra note 102, at 185-87.

[255] Hearing of the House Agricultural Committee, Review of Geographical Indications in the World Trade Organization Negotiations, (July 22, 2003) (Statement of Patrick J. Kole, Vice President of Legal and Government Affairs, Idaho Potato Commission).

[256] Frances Collingwood & John Woolams, THE UNIVERSAL COOK (1797).

[257] See Davidson, supra note 91, at 754; Patrick Rance, THE GREAT BRITISH CHEESE BOOK (1989).

[258] Sadly, living in close proximity to pig farming apparently has less desirable effects too. As one study has noted, “persons living near swine operations who smelled odors were significantly more angry, depressed, tense, fatigued, confused, and less vigorous than control participants not living near swine operations”. Schiffman, Susan S, et al, Mood Changes Experienced by Persons Living Near Commercial Swine Operations, PIGS, PROFITS, AND RURAL COMMUNITIES (1998).

[259] Trevor Hickman, THE HISTORY OF THE MELTON MOWBRAY PORK PIE 49 (1997).

[260] The affiliation of the Melton Mowbray Pork Pie association and Dicksinson & Morris is no secret, of course. The connection between the two entities is disclosed at http://www.porkpie.co.uk/whoweare-mmppa.html

[261] TRIPS, art. 16.1, quoted in First Submission of the United States WT/DS 174 (April 23, 2004) 42.

[262] EC Regulation 2081/92 at art. 14.

[263] U.S Oral Statement at the First Panel Meeting WT/DS 174 (June 23, 2004), 9. (“The EC’s assertions notwithstanding, the United States agrees that there is no hierarchy between trademarks and GIs. In fact, the United States took great pains in its first submission to make it clear that it is important to give all of the TRIPS provisions their full scope”).

[264] Id.

[265] EC Regulation 2081/92 art. 14(2), quoted in First Submission of the United States WT/DS174 (April 23, 2004), 47. (“To the contrary, Article 14 of the EC GI regulation reinforces that owners of registered trademarks are denied their rights under Article 16.1 of the TRIPS agreement. Most obvious is Article 14(2) which addresses the situation of a trademark right that predates the GI right”).

[266] First Submission of the United States , WT/DS174 (April 23, 2004), 46.

[267] See id. at 47.

[268] See generally, Detlev F. Vagts, TRANSNATIONAL BUSINESS PROBLEMS (2003) .

[269] First Submission of the United States WT/DS174 (April 23, 2004) 9;

[270] Id. at 11.

[271] Closing Statement of the US at the Second Substantive Meeting of the Panel , WT/DS174 (August 12, 2004), 2

[272] EC Regulation, 2081/92, art. 12; See also, First Submission of the United States , WT/DS174, (April 23, 2004), 20 (“In other words, a U.S. National is not able to acquire, does not have available to him, and is unable to enforce, the same rights to his U.S. based GIs as EC national have with respect to their EC-based GIs, unless the United States (1) harmonizes its GI protection system to that of the EC (and therefore drops its current system of protection through certification and collective mark system and creates two separate GI protection systems, one specific to GIS, the other trademark based and (2) offers reciprocity with respect to European products).

[273] First Submission of the United States , WT/DS174, (April 23, 2004), 20.

[274] First Written Submission of the European Communities, WT/DS174 (May 25, 2004) para. 117. (“Accordingly, the EC does not condition the registration of geographical indications relating to the territory of another WTI member to the condition that it reciprocally grant equivalent protection for agricultural products and foodstuffs coming from the EC and that it adopts a system for protecting geographical indications equivalent to that in the EC”).

[275] See id. at para. 110. (“In their first written submissions, [the United States and Austria make no attempt to establish that Regulation 2081/92 discriminations between nationals of the EC and nationals of other WTO members.”).

[276] Closing Statement of the US at the Second Substantive Meeting of the Panel , WT/DS174 (August 12, 2004) 2.

[277] Id .

[278] European Communities - Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs - Complaint by the United States - Report of the Panel, WT/DS174/R, 38 (7.103).

[279] See id.

[280] See id. The panel did not that if the European Union’s arguments that the regulation’s text didn’t reflect reality were accepted, obviously, such further investigation would not have been necessary – “Had this interpretation been reflected in the text of the Regulation, the Panel could have reached a different conclusion which would have rendered it unnecessary to continue with an examination of the consistency of those conditions with the provisions of the covered agreements”. Id.

[281] See id at 38, 165.

[282] See id. at 146, (7.661).

[283] See id . at 145 (7.659).