IP Rights for the Decadent

A predominant role of law makers is to help align governance and morality into a cohesive rule of law. However, the presence of morality-based law places detrimental strains on certain intellectual property rights.

In the past, the United States Patent and Trademark Office (USPTO) relied upon the “moral utility” doctrine to deny any “immoral” inventions patent protection for their alleged lack of usefulness. Over the years, a series of U.S. Supreme Court decisions strayed away from the moral utility doctrine and thus rendered it irrelevant. This ideology persisted in the European Patent Office (EPO) where patents may not be granted if the patent challenges the public order or established standards of morality. As a result, patents for embryos or mice susceptible to cancer would be denied for the mere reason that they violate human dignity. In this respect the morality doctrine was uncomplicated because it clearly barred the act of patenting research on human embryos, etc. However, the issue now is that this doctrine can be used to bar copyright on text discussing “prohibited” content.

Consequentially, this creates a grey area in “soft IP,” such as trademarks, where morality can be a key factor in determining whether federal intellectual property protection should be granted. Recently, the USPTO completely disregarded In re Tam, a 2015 ruling in which the court held that the First Amendment trumps certain restrictions on trademark registrations. Through this ruling the Federal Circuit declared unconstitutional the use of morality-based prohibition of “disparaging” trademarks.

In re Tam led the Department of Justice to concede that Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a) was unconstitutional. Regardless, the USPTO now refuses to follow the federal ruling against Section 2(a) and continues to rely upon it to examine trademark applications for compliance with the “disparagement” provision. As a result, the moral utility doctrine remains relevant for the USPTO in a way that curbs free speech under the guise of prudence.

As for now, any trademark applications that are suspended due to the disparagement provision of Section 2(a) will remain suspended unless the following occur: “(1) the period to petition for a writ of certiorari (including any extensions) In re Tam expires without a petition being filed; (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision.”

When it comes to trademarks, the United States has traditionally been the most restrictive jurisdiction in regards to immoral and scandalous trademarks while other jurisdictions opted for more permissive approaches. For more information see 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, №1, 2016. Available at SSRN: http://ssrn.com/ abstract=2716892

For example the Canadian Trademarks Act, section 9(1)(j), prohibits the registration of any scandalous, obscene, or immoral word or device. The problem, though, is that Canadian courts have yet to define these terms so they look to the United States and British jurisdictions to set a standard for the morality doctrine. This was not an issue when the moral doctrines were perceived to follow similar standards. That is no longer the case; each country has modified its moral legal codes so laws reflect its respective public opinion.

One clear discrepancy in trademarks has to do with the word “fuck.” In Australian courts, Section 42 of the Australian Trade Marks Act of 1995 states that a trademark must be rejected if it contains or consists of: (a) scandalous matters, or (b) its use would be contrary to law. However in 2012, Section 42 did not prohibit the mark “Nuckin Futs” despite its suggestive analogy. The scandalous matter was permitted in this case because the court recognized that this language is part modern colloquial language. In comparison, the USPTO has never accepted the word “f*ck” in any trademark registration because it believes that this type of language may still shock and offend the public medium.

This issue was addressed by the European Union through the “relevant marketplace” standard. The EU decided that trademark restrictions based on morality should not be based on the general public but rather analyzed from the standpoint of the relevant marketplace. In this manner, notions of morality would be catered towards the expected audience to allow the trademarks to receive the appropriate protection without the cumbersome censorship that an umbrella of propriety would place over the whole population. Despite the EU’s change in policy, the United States continues to approach trademarks from the standpoint of the general population and refuses to shift toward the relevant marketplace standard.

Such was the deadlock for U.S. policies towards trademarks until the In re Tam ruling where the Federal Circuit called for change in its approach to morality-based impediments to intellectual property rights. The Court held at least one part of Section 2(a) was unconstitutional and called for a more permissive approach to morality based IP restrictions. However, In re Tam did not directly confront the “immoral and scandalous” clause and only addressed the “disparaging” nature in Section 2(a). While the ruling brings to light the unconstitutionality of Section 2(a), the USPTO still refuses to dig the morality doctrine’s grave. Despite the fact that the language of Section 2(a) still clings to life, this outdated ideology regarding censorship will remain under scrutiny in the near future.