If you’re in the adult industry, you’ve probably heard the recent big news of the U.S. Supreme Court striking down the ban on “immoral” and “scandalous” trademarks. This now unenforceable law is what is referred to as a “morality clause.” The decision is a big win in the U.S., but prohibitions still exist in the patent and trademark laws of many countries around the world.
The Paris convention is an international treaty adopted in 1883. It sets out rules that apply to patent, trademark and other forms of intellectual property (IP) law. The rules define processes such that nationals of one signatory country can get the benefit of IP protection in other signatory countries. Article 6B of the Paris Convention recites, in pertinent part:
Laws denying intellectual property protection based on morality make doing business difficult and uncertain in pleasure products and porn.
1. Trademarks covered by this Article may be neither denied registration nor invalidated except ... when they are contrary to morality or public order…
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), effective as of 1995, is another international legal agreement — this one among the member nations of the World Trade Organization (WTO). It lays out minimum standards for the regulation by national governments of various types of IP as applied to nationals of other WTO member countries. Article 27 of the TRIPS Agreement recites, in pertinent part:
2. Members may exclude from patentability inventions, the prevention within their territory of the commercial exploitation of which is necessary to protect public order or morality…
Accordingly, these international treaties allow governments to deny intellectual property protection to inventions (tech) and trademarks of an “immoral” nature.
Focusing our lens first on trademark law, as mentioned earlier, here in the U.S., until just a couple of months ago, there was a ban on registration of “scandalous” and “immoral” trademarks. In the case of Iancu v. Brunetti, the U.S. Patent & Trademark Office (USPTO) declined to issue Eric Brunetti a trademark registration for the term “FUCT,” as applied to an apparel line.
The decision in that case from the highest court in the land opened up a new landscape, allowing even sexually explicit marks to benefit from U.S. federal trademark registration.
Across the Atlantic Ocean, our friends in the European Union are still dealing with such laws. Article 7(1)(f) of the European Union Trade Mark Regulation provides that trademarks shall not be registered if they are “contrary to public policy or to accepted principles of morality.” In September of 2015, the European Intellectual Property Office (EUIPO) denied a trademark registration for the name of one of the country's most successful movie franchises. Constantin Film Produktion GmbH had filed an application to register "Fack Ju Goehte" for a film and respective merchandise. The EUIPO Fifth Board of Appeal and the General Court upheld the decision that the mark is too similar to a “vulgar” English phrase.
The case is on appeal. At the time of submission of this article for publication, a decision has not yet been delivered. However, on July 2, Advocate General, Michal Bobek, issued an opinion (though non-binding) arguing that the court decisions to decline registration should be set aside and annulled. In the opinion, he stated, “… although it is not a primary goal of trade mark law, freedom of expression clearly remains present therein.” He went on to also note, “the protection of public policy and morality is certainly not the key or predominant role of EUIPO and E.U. trade mark law.” So, keep watch for a decision in this case — it could be a game changer in Europe.
Turning our lens now to patent law, in the U.S., though not included in a statute (i.e. black letter law), there existed a “Moral Utility Doctrine” from case law (court decisions). The Doctrine emanated from an 1817 court decision that stated that an invention could not be patented if it conflicted with the “sound morals of society.” The patents for vibrators in the early 1900s do not describe sexual uses. This exclusion may have been purposeful in light of the Doctrine. The USPTO and the courts relied on this doctrine through about 1980, when a series of cases moved away from this philosophy.
Today, questions under the morality clauses typically come up in relation in to genetic engineering and ethics. For example, should patents be allowed on human genes, or genetically modified animals? In my opinion, these questions seem like much more trying questions of ethics than whether women should be allowed to use dildos. Thankfully, in the U.S. and much of the developed world, we’ve come a long way. Accordingly, sex toys are not prohibited patent protection on moral grounds in a vast number of developed countries, including the U.S., E.U., Canada, Australia and others.
That is not the case everywhere though. A little more than a year ago, India’s law came under public scrutiny when it was reported that Standard Innovation, the maker of We-Vibe products (now part of WOW Tech Group), was denied a patent for its C-shaped vibrator by the India Patent Office. In India, Section 3(b) of The Patents Act, 1970 provides, in pertinent part:
The following are not inventions within the meaning of this Act, —
(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life…
The India Patent Office decided that the We-Vibe vibrator fell under this section of the law, and accordingly, was not entitled to a patent. The decision discussed that importing and selling sex toys in India is illegal as under Section 292 of the Indian Penal Code, it is unlawful to sell or distribute “obscene” objects. “Obscene” is defined there as “[A] book, pamphlet, paper, writing, drawing, painting, representation, figure or any other object] … if it is lascivious or appeals to the prurient interest.”
Even in light of these laws, Entrepreneur India reported that major players in the sex toy industry are moving into the market there. Laws denying intellectual property protection based on morality make doing business difficult and uncertain in pleasure products and porn. Brands must come up with a global patent and trademark strategy, which can be complicated by outdated laws relating to sex, obscenity and profanity. Hopefully, the U.S. Supreme Court’s recent decision will eventually be echoed around the world, and the upcoming E.U. decision is the perfect place to start.
Maxine Lynn is an intellectual property (IP) attorney with the law firm of Keohane & D’Alessandro, PLLC, having offices in Albany, New York. She focuses her practice on prosecution of patents for technology, trademarks for business brands, and copyrights for creative materials. Through her company, Unzipped Media, Inc., she publishes the “Unzipped: Sex, Tech & the Law” blog at SexTechLaw.com and the “Unzipped: The Business of Sex” podcast at BusinessOf.sex.
Disclaimer: The content of this article constitutes general information, and is not legal advice. If you would like legal advice from Maxine Lynn, an attorney-client relationship must be formed by signing a letter of engagement with her law firm. To inquire, visit Sextech.lawyer.
