Reconciling trademark rights and free expression locally and globally

Abstract

There is a growing consensus that domestic and international trademark laws must be revised to better protect the right to freedom of expression. This paper argues that governments and free speech advocates should currently focus their efforts on developing a global “soft law” instrument that contains specific, speech-protective model trademark laws that clarify how nations can protect expressive interests in domestic trademark laws without violating their international obligations to protect trademarks. The goal would be to encourage decision-makers to consider how the unreasonable expansion of trademark protection can harm the public interest, and provide governments with the tools to reconcile trademark rights and free expression in their domestic trademark legislation, regulations, and litigation. Nations would have the flexibility to experiment and select which speech-friendly trademark reforms work best given their domestic law and culture. Experimentation is better than harmonization in this area until more countries agree on whether and how to protect expressive interests in trademark law. After providing some background regarding the increasing conflict between trademark rights and free expression, this paper demonstrates how the provisions of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) and the Paris Convention for the Protection of Industrial Property allow member states to protect expression in their trademark laws. It also sets forth a framework for the development of speech-protective model trademark laws relating to what is protectable subject matter in trademark law, the scope of rights, defenses, remedies, and secondary trademark liability. These guidelines could provide a useful menu of options for legislators, trademark offices, and courts trying to balance the various rights and interests in trademark law.