UNCLC Student Seminar on Trademarks and Free Speech - Blog
24 March 2022 by Alice Milton
The UNCLC invited Professor Lisa Ramsey for an online seminar on trademarks, free speech, and inherently valuable expression. The seminar was chaired by Professor Estelle Derclaye with a very interesting presentation by Professor Ramsey, followed by a Q&A. Professor Paul Torremans (co-director of the UNCLC) also gave a brief introduction. Professor Lisa Ramsey is a professor of law at the University of San Diego and the talk was also the subject of her upcoming book. She began with an introduction to trademarks and the different forms they can take.
Trademark law protects traditional but also non-traditional or non-verbal marks, as they can also convey information. Examples of these marks include the shape of product packaging or even the sounds, scent, and texture of a product. However, several recent cases have shown that trademarks can be in conflict with the right to freedom of expression. In these cases, the courts often do not have doctrinal tools to decide who to rule for. Professor Ramsey advocates for more certainty in trademark law on this matter.
Following the Tam and Brunetti cases in the US, several issues need to be considered. For example, there is a potential violation to freedom of expression if it is a government action rather than a private one, and if the trademark law bans or chills expression. It could also violate if it fails the relevant constitutional balancing test, which in the US could be the Central Hudson test. This means that there is a higher level of scrutiny for content-based regulation of speech.
Professor Ramsey argues that it necessary to think about what the purpose of a specific trademark law is. Does this specific trademark provision directly and materially further that trademark goal? And does it suppress or chill protected expression too much in pursuit of that goal? One category which she argues should be kept in the public domain is inherently valuable expression. There is particular concern when a third party can register this subject matter and the enforcement is often too broad.
Inherently valuable expression refers to subject matter that has intrinsic expressive or decorative value in an industry or community before it was claimed as a mark. For example, certain political or social messages, holidays, names or likeness of historical figures etc. Trademarks on these matters can be detrimental in both direct and indirect ways. This shows why brands should care more about the right to freedom of expression and both governments and courts should consider it more.
In the Q&A section, several interesting points were brought up. There was a suggestion of addressing these issues at a global level, which would maybe involving adding mandatory defences. Professor Ramsey added that change should first come from legislators and if they don’t the courts should follow. There was a clarification that political action can be protected but if it is, the protection should be narrow and especially in cases where it can be misleading to the public. Further trends were discussed, such as the trademarking of NFTs. Professor Ramsey emphasised that marks can often be too hastily registered which has a knock-on effect for competitors. Internet platforms also too easily use automatic take down functions. This is further evidence that trademark law needs to be thought out more.