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Utynam’s Heirs: SCOTUS, Swift and more




A regular column devoted to IP curiosities and controversies, named in honour of John of Utynam

What the ‘Fuct’?

The US Supreme Court has struck down a provision in the Lanham Act which bans the registration of "immoral and scandalous matter" because it violates the First Amendment. The opinion was written by Justice Elena Kagan and delivered on June 24. According to the Supreme Court, the USPTO should not have refused designer Erik Brunetti's application to register the trademark 'Fuct' for his clothing line on the basis of immorality. Brunetti avers that the mark is an acronym for "Friends U Can't Trust".

In the eyes of the court, the refusal was unacceptable because deciding that a trademark is immoral discriminates "on the basis of viewpoint." The court deemed that other provisions of the Lanham Act, for example, forbidding registration of a trademark because it is purely descriptive or because it is too similar to another mark, are permissible. Prohibiting registration of a mark because it is "immoral" is not.

While the judges held a unanimous view on the immoral marks ban, they were divided over the "scandalous" element of the law. Kagan and five other justices found a bar on scandalous marks to be just as unacceptable as a ban on immoral marks. However, three others stated that "scandalous" should be read in a narrower way. Justice Sotomayor, for example, expressed concern that the decision could produce "unfortunate results" because the USPTO would no longer be able to reject marks "containing the most vulgar, profane, or obscene words and images imaginable."

Ultimately, the justices agreed that Congress can establish a law addressing profane or vulgar marks as long as only the way of expressing the concept is capable of prohibition, rather than the actual idea.

For now, the echo of Sotomayor's words resounds, leaving us wondering whether the decision will result in an upsurge in crude trademarks being granted.

Taylor Swift angry over lack of rights ownership

Singer Taylor Swift has expressed anger over not owning the rights to her music and being unable to buy them. Swift, now 29, asserts that she is contractually bound by a record deal she signed at 15 and has not been allowed to purchase the rights to her music despite asking to do so.

Ithaca Holdings, a company fronted by entertainment executive Scooter Braun, has bought Big Machine Label Group – which owns the rights to Swift's music – for $300 million. Braun manages both Justin Bieber and Kanye West. Swift has described this deal as "her worst-case scenario."

Swift's story recounts the familiar tale in which a young singer hoping to become a pop sensation signs away their music rights, only to live to regret it. However, it looks like Swift will not face such issues with future releases as, in 2018, she left Big Machine for Republic Records and Universal Music Group, signing a deal which entitles her to the rights to her master recordings.

Promotion for UK judge Arnold

Mr Justice Arnold will be taking on a new role – as a newly crowned Lord Justice in the England & Wales Court of Appeal. Arnold, whom Managing IP interviewed in June as part of a series of judge interviews, is the only IP specialist among five justices to be joining the appeal ranks.

Arnold will be remembered for his forensic approach to judgments, which regularly stretched to hundreds of paragraphs and demonstrated an impressive understanding of complex details. While there is no doubt that IP lawyers will be sad to see him leave the High Court, some may be hoping privately that his successor gives them less case reading to do in future.

The reshuffle came after the judiciary released statistics showing the state of diversity among England & Wales judges, trumpeting various figures. These included 32% of court judges and 46% of tribunal judges being women.

While we have provided a full analysis of these findings on managingip.com, it is worth noting that the Chancery Division, in which the IP judiciary sit, can hardly be described as diverse – there is just one female judge (Mrs Justice Rose) out of 15. This takes nothing away from the integrity and ability of those judges of course; but, with Arnold needing to be replaced, can the Chancery Division take a big step towards more diversity?


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