Welcome to the March 2004 edition of my web site! The roses I write about are the Old Garden Roses and select shrub and miniature roses of the 20th century. For tips on rose culture, pruning, propagation and history, see the "Site Resources Guide" box in the navigation panel at left. To return to this page, click on the "thorn icon" in the margin at left. Articles from the previous months are archived and can be viewed by clicking on the listings in the left margin. Oh, and please don't write to me for a catalog or pricelist.....this is an information site only, not a commercial nursery. If you wish to buy roses, see my sponsor, The Uncommon Rose.
Trademark, and Patent Law as it Applies to Roses
Fifty years from now, we may look back at this time as the Era Of Intellectual Property (IP) Law. With the advent of the Internet, genetic engineering and similar advanced technologies, IP is reaching into all aspects of our lives. Even in our rose gardens we must be aware of intellectual property law. Unlike our great-grandparents, we may no longer have the right to share or sell everything that we grow in our gardens.
There are three important concepts in IP law relevant to our rose gardens: copyrights, trademarks, and patents. While most people are familiar with the terms, few people fully understand them. Of course, before I continue, I must say that I Am Not A Lawyer (IANAL). The information that I present here is from my own research as a lay person. If you believe that any of these issues apply to you, you should consult an attorney rather than rely on my research.
A copyright is a right to exclusively control a creative work. It is not possible to copyright a rose or rose variety. You can copyright a photograph, painting, a song, or a book about a rose, but the rose itself does not fall under the auspices of copyright law. Though it may be argued that breeding a rose is a creative work, even the original breeder of a rose cannot copyright their rose creation.
At left: 'Oshun', a new Paul Barden rose, introduced 2004.
Many people, though, take photos of their gardens and post them on the Internet. Once a person creates a work like a photo, they automatically own the copyright on it. This means that they have the right to control how other people reuse the image. Copyrights last for seventy years beyond the life of the creator, or, for corporations, ninety-five years. If you post a photo on the Web, other people cannot simply copy it and use the image on their own Web site unless you grant them permission to do so. Using some else's copyrighted material without their permission is called copyright infringement. Publishing something on the Internet does not automatically put in the public domain.
Even though a creative work is inherently copyrighted upon creation, the rights to statutory damages and attorney's fees in an infringement lawsuit requires the copyright to have been registered with the US Copyright Office prior to the infringement. The use of the copyright symbol “©” is available for both registered and unregistered copyrighted material. The use of the symbol is not required; however, its use does proclaim that the author is at least thinking about the issue of copyright.
Trademarks are names, phrases, symbols, or sounds that identify a business or product brand. Once officially registered, a business has exclusive rights to the name or phrase used in a commercial context. Businesses must be very careful in choosing names to trademark. If their name or phrase falls into common use and becomes synonymous with the product itself, the business is at risk of losing their trademark (e.g,“Xerox”, “Kleenex”).
The name of a rose cannot be trademarked. A rose variety can be sold under a brand name, but the rose name that identifies the variety itself is not part of the trademark. Let's try an example: a business discovers a white climbing rose that they cannot identify. They propagate and start selling it using the name “Dorothy's Ambiguity”. Reference books for roses pick up the name and associate it with that specific variety. People all over the country started referring to that variety by name as “Dorothy's Ambiguity”. Years later, the nursery starts publishing the name as “Dorothy's Ambiguity™”. The nursery wanted to control that name in perpetuity, but they made a mistake right at the beginning. If they were to attempt to register the trademark, it would, most probably, be rejected. Rather than selling it as “Dorothy's Ambiguity”, they should have labeled it “Dorothy's Ambiguity™” White Rose instead. The trademark name would apply only to “Dorothy's Ambiguity™”, a brand name of roses.
A fine example of the proper use of trademark is the Flower Carpet® series of roses. Notice that the name “Flower Carpet” is a registered brand name, while the individual varieties are identified only by color: Flower Carpet® Pink, Flower Carpet® Yellow.
You must be careful when you purchase roses with a trademarked brand name associated with them; you may not be getting what you thought. The trademark is more portable the rose's actual variety name. For example, consider a scenario similar to the last example. This time, our example nursery is using trademark properly and marketing the mystery rose as “Dorothy's Ambiguity™” White Rose. Suppose the mystery rose is later identified as actually being the variety “Mendocino Goth Girl”.
In subsequent years, the nursery, in their own breeding program, develops a very similar rose that they like more than “Mendocino Goth Girl”. They don't publicly give it a name, but internally they call it “W1417”. They stop propagating “Mendocino Goth Girl” and instead propagate “W1417”. The product designation, “Dorothy's Ambiguity™” White Rose, is now applied to “W1417”. A customer that purchases “Dorothy's Ambiguity™” White Rose gets a different rose than the ones they purchased under that same name in previous years.
Once a trademark is used properly, a nursery may renew the registration indefinitely. This means that the nursery controls the name and can stop other nurseries from using that name. They cannot stop another nursery from selling the actual plant, unless there is also a patent. No other nursery may sell a rose identified as “Dorothy's Ambiguity™” White Rose even though the public may perceive that to be the proper name of the rose variety. This gives the nursery a perpetual monopoly beyond the scope of patents. While a trademark that has fallen into common public use is a trademark in jeopardy, it takes an expensive lawsuit from a competitor to break one. The government does not police trademarks. For the most part, rose nurseries do not have the capital to engage each other in that kind of battle.
There is nothing to stop another nursery from trademarking their own name and applying to that same variety: “Dorothy's Ambiguity™” White Rose may be the same rose as “Kabloom™” Five Petalled Rose which also happens to be “Mendocino Goth Girl” except after 2003 where “Dorothy's Ambiguity™”White Rose was actually “W1417”. Confused, yet?
For the cause of proper plant identification, proper trademark use is a disaster. The actual variety name can be hidden from the public. Different nurseries end up having to use different names for the same rose variety. Nurseries may change the variety in use under an established name. As a rule of thumb, if a rose name has “™” or “®” after it, you cannot rely on that name identifying an actual variety.
According the US Patent and Trademark Office, a plant patent may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. The owner of a plant patent can exclude anyone from asexually reproducing the plant (rooting cuttings or grafting) for the duration of the patent. Patents in the United States last for twenty years from the date of the patent application.
At right: 'Allegra', a newPaul Barden rose, also introduced in 2004.
If a plant is patented, you need a license from the patent holder in order to make cuttings of that plant even in your own back yard. While it is unlikely that you would get caught doing it at home, it is still undeniably unlawful. Unlike copyright, there is no concept of “fair use rights” for patents. Contrarily, in Europe, there may be a fair use exception for personal use of patented plants.
Licensed propagators of patented rose are generally required to tag the plant with a warning. We've all seen “Asexual reproduction of this plant is prohibited”. Included is the patent number prefixed with the letters “PP” which stands for “Plant Patent”. If, instead of a patent number, there appears “PPAF”, that means that the plant patent has been applied for, but not yet granted. The plant is still protected by patent law.
It is possible that plant patents could lead to the extinction of some plant varieties. There are several examples of companies owning patents to some interesting rose varieties but they neither propagate the rose themselves nor grant anyone else license to do so. The variety may have been introduced and not been popular in its first years. The company stops producing the plant and does not grant licenses because there is no profit in doing so. It is unlawful to reproduce the variety even to save it from extinction without the permission of the patent holder.
While asexual reproduction of a patented variety may be prohibited, there is no prohibition of the use of the plant in sexual reproduction. For roses, that means that a patented variety may be used as either a seed or pollen parent without permission of the patent holder. The offspring are free of patent burdens.
A sport of a patented rose is considered to be a different plant that is not covered under the original plant's patent. The sport is separately patentable. Some patent holders will try to claim sports as their own, but that right is negotiated as part of a licensing contract rather than being inherently part of patent law. A nursery that has license to propagate a patented variety may be contractually required to turn over sports to the original patent holder. This requirement does not automatically transfer to the end consumer, however.
Someday, perhaps, buying roses will be like buying computer software: we'll have to sign (or click on) a license agreement before we can put the roses in the garden. We'll never really own the plants, we only license them. Since the license agreement is a contract, the patent holder will have ultimate control over our plants, their sports and their seeds. Imagine having to pay a yearly rose license renewal fee to keep the plants in your garden. This is already happening to farmers that are contractually obligated to pay a yearly fee to use the seed that they save from their own fields. Intellectual property law effects us all: it really is moving into our gardens.