Thursday, January 21, 2016

Recommended Reading: Marc J. Randazza, "Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights"

Friend-of-the-blog, MEET THE BLOGGERS sponsor, and First Amendment expert Marc J. Randazza has published a timely article entitled "Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights," Nevada Law Journal, Vol. 16, No. 1 2016). [Free subscription download here].

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.

Commenting on the potential impact of In re Tam, Mr. Randazza posits that the recent CAFC ruling "signals a sea change in how the United States may look at morality issues in the trademark realm."

After decades of frustration, the First Amendment argument against Section 2(a) finally prevailed, as In re Tam explicitly overruled any support that clause might have found from In re McGinley. *** While In re Tam did not directly confront the immoral and scandalous clause, it confirmed the theory that Section 2(A) is flawed, and cannot withstand constitutional scrutiny.

Read comments and post your comment here.

TTABlog comment: The Randazza Legal Group may be found here.

Text Copyright John L. Welch 2016.


At 10:34 AM, Anonymous Anonymous said...

The CAFC ignores the holding in Walker v. Texas Division, Sons of Confederate Veterans, Inc. at its peril. Supreme court smackdown acometh.

At 10:58 AM, Blogger John L. Welch said...

I think Walker is distinguishable. In Walker, you could still get a license plate (albeit without the flag) that would give you the same benefits as the plate with the flag.

In Tam, a federal service mark registration would provide significant benefits, so that denying the registration based on content would have a significant impact on Tam's rights.

At 3:33 PM, Anonymous Anonymous said...

2(a) doesn't strip one of their trademark - just registration - and it's arguably still enforceable as an unregistered mark. The USPTO would continue to, e.g., issue false association refusals and offensive refusals to block other uses. Walker stands for the proposition that making an offensive mark part of public system constitutes government speech. Government speech is not subject to First Amendment scrutiny. The CAFC's treatment of the government speech argument was nonsensical, particularly since the Redskins SJM Order was in the ether.

At 5:48 PM, Blogger John L. Welch said...

I think you have to concede that a registered mark enjoys more rights than an unregistered one. I do, however, think that the issuance of a fedearl registration is "government speech" in the sense that the registration may be seen as the government's stamp of approval of the mark itself.


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