No More Than Lanham, No Less That Paris?: A Federal Law of Unfair Competition
Denham, William E., IV, Texas International Law Journal
I. INTRODUCTION AND OVERVIEW
When his country wants a king, young Arthur-with one swift pull-looses Excalibur from the rock to lift his kingdom's burdens. While not facing as dire a crisis, the modem world of international business litigation continues to struggle under competing interpretations of how the unfair competition provision of the Paris Convention1 works
through the United States federal trademark legislation, the Lanham Act.2 In particular, the debate has centered around whether this provision, Article 10bis,3 provides "substantive" or "national treatment" rights.4 Though signed by the United States in 1887,(5) and considered our most important international agreement on industrial property rights,6 this uncertainty endangers that status.
Recently, the debate over the scope and applicability of Article 10bis shifted focus, as one author suggested that this article of the Convention holds both types of rights.8 This proposal further argued that American law grants unequal protection against unfair competition, depending on which parties are involved in the suit. Unsurprisingly, this analysis lead to the conclusion that legislative action would be needed to remedy this inequity. Though this Comment concurs in the premise that Americans deserve the benefits of vigorous unfair competition laws, full agreement does not a publishable work make. Thus, the goal here is not necessarily to contradict the holding that legislation is necessary, but to clarify and assess each step logically necessary to maintain that result.9
This Comment attempts to tell a story (not a tale) that will leave the reader with an adequate, if not clear, impression of this portion of the international commercial field. Part II strives to understand the flexible yet limited term "unfair competition," and to define an appropriate structure to coordinate the analysis. The subsequent portions introduce and present alternative interpretations to each step required for the legislative solution to inexorably hold.10 Part III scrutinizes the Paris Convention in order to illuminate the substantive versus national treatment rights argument. Next, Part IV briefly examines the Lanham Act's Section 44 and its potential availability in domestic suits. Finally, Part V stakes new ground in exploring the premises that (1) Section 43 and Article 10bis define unfair competition, (2) Section 43 defines unfair competition less broadly than the
Convention, and (3) adoption of the wider Article 10bis definition into American law would be helpful to American interests. Part VI concludes by summarizing the results.
II. BACKGROUND: TWO LOOKS AND A THREE-STEP
A. A Look at "Unfair Competition"
If legal reality equated with linguistic potential, "unfair competition" would appear to eliminate the need for all other commercial torts. Unfortunately for plaintiffs, the law does not always embrace lexical simplicity, as is the case here. This legal phrase simply does not denote the lethal, awesome powers of redress that a layman (or young law student) might expect."11
Instead, while flexibly able to describe different legal circumstances, "unfair competition" continues to be bound by historical ties and unique concerns.12 While distinct from trademark infringement, unfair competition law has close ties with that legal arena, reflecting their historic balance: unfair competition originally protected only unregistered marks, while trademark infringement protected registered marks.13 Commentators and courts now often use trademark infringement as a barometer by which unfair competition may be measured, but such tests do not always achieve standard results. On the domestic level alone, disagreement exists as to whether unfair competition means something less than trademark infringement,14 something more,15 or whether the two simply balance as historic equals.16 Paralleling this domestic indeterminacy, unfair competition protection varies greatly from nation to nation, though the United States leads most countries in this field. …