Freedom Of Expression And Morality Based Impediments To The Enforcement Of Intellectual Property Rights
First Amendment and Intellectual Property expert Marc Randazza’s latest law review article tackles the intersection of freedom of expression and intellectual property law. Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights,” does not just examine the issues from a U.S. perspective, as it reviews intellectual property rights and morality from a global perspective.

The Abstract alone gives you enough reason to download the article and dig in:

“In the case of intellectual property rights (IPRs), some nations erect barriers to the protection of IPRs on the basis of ‘morality.’ This paper will examine the implications of morality-based impediments to the enforcement of IPRs and their supportability under international agreements.

If that description doesn’t make you run to download it, it manages to include an academic discussion of ‘Cumfiesta,’ ‘Screw You,’ ‘Nut Sack Ale,’ and Japanese porn being stolen in Taiwan. Beat that.”

Randazza begins with a brief analysis of “Patents and Morality,” noting that historically, the United States rejected patents when they were deemed to be for “immoral” products, but that as the United States has drifted away from the “moral utility” doctrine, other countries are embracing the theory.

For example, the European Union denied patent protection to human embryos, and Canada decided that higher life forms are not patentable subject matter.

Randazza notes that denying patent protection on morality grounds does not offend free expression principles. That is when the article shifts to trademarks and copyrights, where free expression does come into play.

Canada, Australia, the European Union, and the U.S. all have provisions in their Trademark Acts that prohibit the registration of immoral trademarks, with varying evidentiary standards.

Randazza uses a fun example to illustrate this point. In a 2012 Australian court decision, the word “fuck” was found to be “part of the universal discourse of the ordinary Australian.” Thus, “Nuckin Futs” was allowed trademark registration. Meanwhile, in the United States, the USPTO has never accepted a trademark registration that contained the f-bomb because, as one examiner put it, “the public still feels a jolt of offense, shock, or dismay when they overhear the word uttered in public.”

In the European Union, however, notions of morality change depending on the relevant marketplace. For instance, “SCREW YOU” may be an acceptable mark for sex toys, but a court found the mark would not be appropriate for mundane products, such as sunglasses and hats being sold under the “SCREW YOU” brand. Still, and most importantly, the Grand Board at least recognized that there are still “expressive elements to a trademark, and freedom of expression principles must be considered.”

In contrast, Randazza points out that the U.S. has tended to cast aside the “relevant marketplace” theory. He uses the “CUMFIESTA” case as an example, where the relevant marketplace was the pornography-consuming public. Although this market would hardly find the mark offensive or “shocking,” the Trademark Trial and Appeal Board (TTAB) decided the scandalousness of the mark should be determined by whether the general public would find it shocking, not the relevant marketplace.

However, the article notes that the TTAB seems to be drifting toward a more European “relevant marketplace” standard, as the relevant marketplace for an adult beverage called “NUT SACK DOUBLE BROWN ALE” would suffer no meaningful offense to the mark.

Free speech arguments against prohibitions on registration are often countered by the argument that a failure to register is not the same as a prohibition on use. Randazza points out that prohibiting registration while allowing use seems counterproductive:

“If use is permitted, but registration is not, then it would seem that the morality police have placed their priorities backwards. Certainly, if public order were threatened by a mark, and the moral foundation of the nation were placed at risk by it, then why would the member state merely prohibit registration, but not prohibit the use of a mark that could cause such chaos?

In the context of copyright protection, Randazza notes that there are less explicit morality-based restrictions on enforcement than in the patent or trademark context, but also that the risks are even higher than in the trademark context. Copyright is intended to be an engine of free expression. Denial of protection on morality grounds seems to cut against this utilitarian purpose.

Randazza concludes that the truly troubling side of allowing content-based tests for copyrights is that governmental entities would be allowed to engage in value judgments when it comes to free expression. He poses this question: Should the government be allowed to determine what kind of thoughts and expression are acceptable, thus distorting the marketplace of ideas? As Randazza puts it, “[A] ‘morality’ based judgment is inevitably amorphous and blurry, and requires us to trust those in power to make decisions for us, which does not bode well for notions of individual liberty.”

Randazza, Marc J., Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights (January 16, 2016). Nevada Law Journal, Vol. 16, No. 1, 2016. Available at SSRN: http://ssrn.com/abstract=2716892