Disparaging, Scandalous and Immoral Marks
Like any proprietor wishing to protect its trademark rights, those adopting marks having “shock value” may also create valuable rights and wish to pursue stronger, enforceable trademark rights through registration. These parties have faced obstacles as IP offices in various countries enforce the provisions of their trademark laws that relate to immoral or scandalous marks. Arguments related to “free speech” have often been used as a defense.
Similar struggles have surfaced with respect to marks that are believed to be “disparaging”. This is especially the case with sports teams who adopted names many years ago and are now facing challenges due to our increased awareness through Truth and Reconciliation of the offensive nature of some names to certain ethnic groups.
The United States and the European Union have both recently considered the provisions of their laws in these areas and have issued important decisions. Below is an update on the developments in the United States since my earlier report here, as well as developments in the European Union. Most of the activity in this area in Canada has been in front of Human Rights tribunals and an update thereto is also provided below.
As discussed in my earlier article, in June 2017 the U.S. Supreme Court found that the USPTO's refusal under Section 2(a) of the Lanham Act to register THE SLANTS as a trademark to be viewpoint discrimination in violation of the First Amendment's free speech (Matal v. Tam (U.S, No. 15-1293, June 19, 2017)). The application was filed by a Japanese American rock band wishing to "reclaim" the term and rid it of its disparaging effect. The Tam decision is with respect to the "disparagement" provisions of Section 2(a) and did not address the provisions of Section 2(a) related to “immoral” or “scandalous” subject matter. These latter provisions, however, have been more recently considered in re Brunetti, 877 F.3d 1330 (Fed. Cir. Dec. 15, 2017).
The trademark in question in Brunetti is FUCT for apparel items (including children's apparel). Relying largely on the Tam decision, the Federal Circuit struck down the Lanham Act's provisions related to "immoral and scandalous" marks under Section 2(a). The majority found that, "[i]ndependent of whether the immoral or scandalous provision is viewpoint discriminatory, we conclude the provision impermissibly discriminates based on the content in violation of the First Amendment."
The Federal Circuit denied further hearing in Brunetti, and on September 7, 2018, the government (USPTO) filed a petition for writ of certiorari in the case, which is now captioned Iancu v. Brunetti, U.S. Supreme Court Case No. 18-302. On January 4, 2019, the U.S. Supreme Court granted the petition to review.
In its petition the USPTO highlights that the provisions of the Lanham Act that were struck down in Brunetti required the USPTO to deny registration of profane marks and those with graphic sexual images. Since the Tam decision, there has been an increase in "highly offensive, even shocking, images", and more are expected. The USPTO’s petition also argues that:
- Though the Tam ruling was unanimous that the disparagement provisions of Section 2(a) were in violation of the First Amendment’s free speech, there was not a majority agreement on the rationale for the ruling, thus it should not be precedential.
- The ruling in Tam was that the disparagement provisions of Section 2(a) are “viewpoint discrimination”, while “immoral” and “scandalous” subject matter are viewpoint neutral. The U.S. Supreme Court has consistently ruled that obscenities are not protected speech.
- The provisions under Section 2(a) are with respect to registration of a trademark and do not prevent any speech, use of the mark, or rights under common law.
- The First Amendment poses a duty to refrain from affirmatively restricting speech; however, the government is under no obligation to affirmatively promote profane marks it does not wish to associate itself with.
Among other arguments, Brunetti argues that viewpoint discrimination is relevant and that there is no basis for differentiating between “disparaging” and “scandalous or immoral” marks in this regard.
Until the Supreme Court issues its decision, the USPTO will suspend examination of marks deemed to be “scandalous or immoral”, provided examination on other fronts is complete.
Scandalous and immoral marks have also been the subject of cases before the General Court of the European Union (“GC”). In 2015, Constantin Film Produktion GmbH filed an application at the European Community Trademarks Office for "Fack Ju Göhte". “Fack Ju Göhte” is a film franchise in Germany that has enjoyed great success in German speaking countries. During examination, the EUIPO examiner refused the application on the basis of Article 7(1)(f) of the EUTM Regulations which prohibits the registration of marks that are contrary to public policy or accepted principles of morality. An appeal was filed.
On appeal, the GC sided with the Examiner and agreed that registration should be denied. Despite the intentional poor grammar and spelling, “Fack Ju” is understood as a reference to “fuck you”, and “Göhte” as a reference to Johann Wolfgang von Goethe, a deceased poet well known in Austria and Germany. The Court found that the relevant public, including Austrians and Germans, would find the mark offensive. The application was for use in association with a variety of everyday items, such as games, clothing, etc., therefore, everyday consumers of those items (and not just those who watch the movie and understand its humour) would encounter the mark.
Unlike the decisions in the United States, the GC refused arguments with respect to free speech, stating that free speech is not relevant to this issue of trademark law. Furthermore, it states that acquired distinctiveness does not apply to marks that are contrary to accepted principles of morality.
In March 2018, the GC also issued its decision in La Mafia Franchises v EUIPO, T-1/17, to invalidate the registration of a design trademark incorporating the words “La Mafia se sienta a la mesa”, as contrary to accepted principles of public policy and morality. The mark was registered for use in association with a variety of goods and services including clothing and the operation of a restaurant chain. The element of the mark that is “se sienta a la mesa” translates to “takes a seat at the table”.
The mark was registered in 2007 and in 2015 the Italian Republic filed a declaration at the EUIPO that the mark was invalid since “mafia” refers to a criminal organization and the mark would trivialize this criminal organization. This would in turn evoke negative emotions and impair the positive image of Italian cuisine. The EUIPO Cancellation Division invalidated the mark, a decision that was upheld by the First Board of Appeal of the EUIPO. An appeal was made to the GC.
In its assessment of the absolute ground for refusal based on public policy/morality, the GC stated that the analysis is from the point of view of ‘a reasonable person with average sensitivity and tolerance thresholds’. It should not be directed at only the public to which the goods are targeted, but also those that may otherwise encounter the mark. Also, since it is a EU registration, the analysis must be with respect to all countries of the EU. The GC noted that “mafia” is often associated with a criminal organization originating in Italy that often resorts to violence in carrying out its criminal activities. The GC stated that these criminal activities are contrary to the values of respect for human dignity and freedom as set out in the EU Charter of Fundamental Rights. The word element ‘la Mafia’ also has deeply negative connotations in Italy.
Other Ongoing Challenges
The groups that have initiated various disputes related to disparaging marks have been vocal opponents for some time. The U.S. trademark registrations by the Washington Redskins football club were challenged by Native American groups in the United States under the disparagement provisions; however, in view of the Decision in Tam, its marks will remain registered. Despite this, vocal opponents continue to stage protests.
The Cleveland Indians Baseball Company has also faced criticism and protest with respect to its use of INDIANS as part of its marks, as well as the use of the “Chief Wahoo” logo on its uniforms. As discussed in my previous article, complaints were filed at multiple Human Rights tribunals in Canada by Douglas Cardinal. In response to this pressure, the Cleveland Indians Baseball Company announced in January 2018 that it would remove the “Chief Wahoo” logo from its uniforms by the start of the 2019 season. Despite this, Douglas Cardinal stated that he will continue to pursue his complaint since use of “Indians” will continue, and the logo will still appear on promotional materials. The Hearing before the Human Rights Tribunal of Ontario was scheduled for July 2018; however, the status of the Hearing or a Decision could not be found. The HRTO has announced that it is understaffed and backlogged, therefore, it could be some time before we hear further on this matter.
These various decisions relate to whether disparaging, scandalous, or immoral marks may be registered, and do not fully address the right to use such marks. As discussed above in Iancu v. Brunetti, the USPTO argues that its refusal to register is not a violation of free speech since such marks may still be used and acquire rights at common law. In Canada, however, unlike Section 2(a) of the Lanham Act (which bars "registration" of an application for a mark that is contrary to its provisions), the corresponding provision under the Canadian Trademarks Act (Section 9(1)(j)) states that no person shall "adopt" a mark that is contrary to its provisions. Should a case on these grounds find its way to the Courts in Canada, this wording arguably provides a better position for a "free speech" argument under Canadian law.
There certainly appears to be an increase in “shock value” marks such that we are likely to see more challenges with respect to the registration of marks that are scandalous or immoral. Also, Truth and Reconciliation commissions in Canada and abroad have created awareness of the need to reconcile past wrongs and to be more aware as a society moving forward. These commissions have created a more confident vocal opponent such that we are likely to see increasing challenges with respect to marks that may be offensive to certain ethnic groups, warranting more caution with respect to the adoption of such marks.