Intellectual Property: Freedom of Expression and Sustainability and Human Rights and Enforcement
Introduction: The Case of Paddy Gower and Offensive Trademarks
Last year, a significant event in New Zealand trademark law involved media personality Paddy Gower and his efforts to register the phrase "the effing news." The Intellectual Property Office of New Zealand (IPONS) initially rejected this application. However, Gower successfully refiled the mark as "this is the F$ % ING news," substituting symbols for the letters of the swear word. This case sparked academic interest in the registration of offensive terms and prompted researchers, including Alex Allen Franks and the speaker, to conduct Official Information Act (OIA) requests into IPONS examination reports. These inquiries focused on the treatment of swear words and generated media attention, including a piece in The Conversation and an interview with Radio New Zealand involving Professor Lisa Ramsey from the United States.
Intellectual Property and Human Rights: Concepts and Foundations
There is a growing intersection between intellectual property (IP) and human rights, particularly regarding the right to freedom of expression. Human rights are defined as inherent rights belonging to all human beings regardless of their background, primarily focusing on the relationship between a nation's government and its citizens. Typical examples include the right to life, liberty, freedom from slavery, and freedom from torture. In New Zealand, these rights are largely promoted and protected by the Human Rights Act 1993 and the Bill of Rights Act 1990 (BORA).
Scholars such as Professor Graham Austin and Lawrence Helfer have identified two primary conceptual approaches to the interface between IP and human rights. The first approach views them as being in fundamental conflict. The second approach sees them as broadly compatible, though it acknowledges a debate regarding the specific strike point between public access and incentives for creators. Regardless of the approach, the central question involves the configuration of IP rights to ensure they facilitate access while still incentivizing innovation.
Trademarks as Property and Language
Under Section of the Trademarks Act 2002, registered trademarks are explicitly defined as property. However, trademarks also operate as a form of language. Many trademarks have entered common parlance as metaphors or descriptive terms, such as "Hogwarts" used to describe architectural styles, "Rolls Royce" used as a metaphor for high quality, or pop culture references like those made by artists such as Charli XCX. Research by US academics Barton Beebe and Jeanne Frohmer in their article "Are We Running Out of Trademarks?" highlights a significant depletion in the supply of available words. Their deep-dive into the US register found that out of the top most frequently used words, only three did not appear within an active trademark in 2016. This means of the most frequent words were subject to a trademark, raising concerns about the curb of freedom of expression when trademarks comprise ordinary language.
Freedom of Expression in Trademark Law
Freedom of expression is protected under Section of the New Zealand Bill of Rights Act and the First Amendment of the US Constitution. Generally, government regulation of trademarks is consistent with freedom of expression because the law aims to prevent consumer confusion and the use of misleading signs. However, conflicts arise during both the registration and enforcement phases. In the US, high-profile cases have challenged the constitutionality of refusing registration for offensive marks.
In the case of Matal v. Tam (2017), Simon Tam sought to register "The Slants" for his Asian American band to reclaim the slur and drain it of its denigrating force. The USPTO rejected the mark under Section of the Lanham Act (the "disparagement clause"). The Supreme Court eventually held that this clause violated the First Amendment because it discriminated based on viewpoint. Justice Alito argued that giving offense is itself a viewpoint, while Justice Kennedy warned that such clauses chill speech by removing perspectives from the marketplace of ideas.
This was followed by Iancu v. Brunetti (2019), where Eric Brunetti applied to register the brand "FUCT" for clothing. The USPTO rejected it as "immoral, deceptive, or scandalous." The Supreme Court again ruled this unconstitutional on the grounds of viewpoint discrimination. While Justice Sotomayor suggested that vulgarity could potentially be narrowed without violating the First Amendment, the ruling led to an influx of attempts to register highly offensive terms, including swastikas and racial slurs.
The New Zealand Context: Bill of Rights and Maori Interests
In New Zealand, Section of the Trademarks Act 2002 prevents the registration of marks likely to offend a significant section of the community, including Maori (related to the Y262 claim). Regarding Paddy Gower, there is debate whether rejecting "the effing news" violates the Bill of Rights Act. Since IPONS is part of the executive branch, BORA is engaged. However, some argue that expression is not curtailed by a rejection because a person does not need a trademark to speak or to trade; a trademark is a source of rights rather than a prerequisite for communication. If a limit on expression is found, it may be viewed as a justified limit under the law.
Enforcement, Parody, and Trademark Overreach
Conflicts also occur during enforcement. Professor Lisa Ramsey argues that trademarks like "Superhero" (jointly owned by DC and Marvel) or "Lifeguard" (registered for clothing) allow owners to exclude others from using descriptive terms. For instance, Warner Brothers has sent cease and desist letters to parents hosting Harry Potter-themed parties, and some entities have attempted to claim rights over terms like "Chili Crunch."
In the landmark case involving the song "Barbie Girl" by Aqua, Mattel sought an injunction against MCA Records. The US Court of Appeals for the Ninth Circuit ruled that the song was a parody protected by the First Amendment and did not mislead consumers as to the source. Justice Kozinski famously concluded the judgment by advising the parties to "chill."
In Australia, environmental group Greenpeace used the trademark of AGL Energy in a campaign calling them "Australia's biggest climate polluter." While trademark law in Australia and New Zealand lacks an explicit parody exception, the court found Greenpeace did not use the sign "as a trademark" (i.e., as a badge of origin). Therefore, there was no infringement. Conversely, in the New Zealand case involving a student's mock environmental report on Solid Energy, the court granted an interim injunction against the student. This decision is often criticized because the student's use was likely not in the course of trade and was not used as a badge of origin.
The Issue of Unjustified Threats
A major concern is that many trademark disputes never reach court because defendants are intimidated by cease and desist letters. Australia has a provision preventing "unjustified threats," allowing recipients to seek damages if a threat of infringement is baseless. New Zealand lacks this protection for trademarks, though copyright law may soon include exceptions for parody and satire. Without such protections, individuals may comply with aggressive legal demands, resulting in the curtailment of their free speech.
Intellectual Property and Sustainable Development
Sustainable development is defined as meeting the needs of the present without compromising the ability of future generations to meet their own needs. This is linked to the UN's Sustainable Development Goals (SDGs) and targets. The World Intellectual Property Office (WIPO) views IP as crucial for providing incentives to innovate toward these goals, particularly SDG (Responsible Consumption and Production).
Trademarks can aid sustainability by helping consumers identify products that meet their ethical and environmental preferences. Specifically, "certification trademarks" are used to distinguish goods certified by an independent person for their origin, material, quality, or other characteristics from those not so certified. Unlike standard trademarks, the owner of a certification mark does not use it but instead certifies others who meet the standards. Examples include the "Green Tick" certification.
However, the effectiveness of these marks relies on trust. "Greenwashing" occurs when traders make false or misleading claims about environmental impact, often using the color green to imply sustainability. Trademark law has limited tools to police those who abuse this system, although the Fair Trading Act provides some recourse. Consumers often struggle to distinguish between valid certification marks and misleading labels.
Course Administration and Assessment Details
The speaker noted that the mid-term test has been finalized and will consist of questions. Nine of these are multiple-choice questions worth mark each, and two are short-answer questions worth marks each, totaling marks. Students were encouraged to complete the SET course evaluations, as the current response rate is only out of students ().