Sex exceptionalism in intellectual property.

AuthorRothman, Jennifer E.
PositionIntroduction through II. Copyright's Purported Move Toward Indifference About Sex and Morality B. Copyright Law Today - See No Evil, p. 119-143


The state has long attempted to regulate sexual activity through a combination of criminal and civil sanctions and the award of benefits, such as marriage and First Amendment protections, for acts and speech that conform with the state's vision of acceptable sex. (1) These regulatory efforts contribute to our society's construction of sex. The law's construction of sex has largely been a negative one, in which sex--unless it is in service to other state-approved goals (such as procreation or marital intimacy)--is devalued and feared. In particular, the law has contributed to a vision of sex that discounts sexual pleasure, female sexuality, homosexuality, and a variety of "non-conforming" sex interests, such as bondage/sadomasochism. (2) Failure to challenge such constructions reinforces the "notion that sexual practices are innate or biological, rather than the product of social and cultural forces." (3) The law is therefore an important site of intervention to expose and critique the construction of sex. Intellectual property (IP) laws, though not commonly considered in writing about the law's construction of sex, play a role in perpetuating this often negative and limiting vision of sex.

Sex has long played a role in determining the scope of IP protection, especially in the context of copyright and trademark law. At common law, works, inventions, and marks deemed sexually explicit or simply suggestive were denied the protection of the law. (4) Even today they remain disfavored in some contexts. Although the penalties for non-compliance with the state's vision of appropriate sex are less severe in IP law than those, for example, in criminal or family law, IP law signals the state's normative and exceptional views of sex. By sex exceptionalism I mean the way in which IP (and other laws) treat sex differently than other activities. This sex exceptionalism often exhibits a negative view of sex that either dismisses the value of sex or, worse yet, treats it as something harmful. This sex negativity can also manifest as sex normativity in which the state channels sex into preferred forms while excluding or penalizing other forms of sex. IP laws demonstrate all of these modes of engaging with sex--at times treating all sex as exceptional, as uniquely harmful, or simply valueless, and at other times valuing sex but favoring certain types of sex over others.

IP law not only contributes to the legal construction of sex, but also has a particularly significant multiplying effect on the social construction of sex because IP law influences cultural artifacts, such as movies, books, plays, and products and services, that themselves shape our culture's construction of sex. The parameters of IP law encourage creators, companies, and users into safe zones where they are more likely to get copyright protection, register a mark or benefit from fair use or other defenses to infringement and dilution. Thus, the law can stigmatize works and marks with sexual content or certain forms of sexual content, thereby contributing to the channeling of sex into limited acceptable forms.

Instead of "recognizing the diversity of sexual and intimate relations worthy of respect and protection," (5) courts often have imposed their views of what constitutes "good sex." IP laws therefore harm individuals living both within and outside the legal construct of acceptable sex. (6) For those who cannot conform, the legal and social disapproval can cause psychological and physical harm and negatively affect their relationship to themselves, their sexuality, and their place in society. (7) The laws also discourage some, who otherwise might wish to or would benefit from doing so, from departing from the dominant construction of sex. IP laws therefore interfere with our ability to develop and embrace a more positive relationship to sex.

In the context of this symposium on the adult entertainment industry, (8) this sex exceptionalism and normativity reveal that the industry may fare worse in some IP disputes than other industries. But the scope of this project sweeps more broadly than the adult entertainment business and pornography. A consideration of the treatment of sex in IP highlights some of the dangers of the differential treatment of sex in general and also some of the pitfalls of using the IP system to further goals unrelated to its core missions. Few, if any, scholars have made these connections.

This Article will proceed in three Parts. First, I will consider trademark law's explicit and implicit disfavoring of sexual content. Second, I will consider copyright law's putative move toward treating sexual content like all other content. Despite this narrative, I will point out some of the ways in which copyright law continues to treat works with sexual content differently than other works. Finally, I will situate this discussion in a broader critique of the law's treatment of sex. I call for a greater awareness of sex exceptionalism and normativity, particularly in IP law, and its elimination. Works, marks, and uses of them should not be disfavored solely because they have sexual content, nor should courts be in the business of assessing what constitutes good or bad sex. (9)


    Trademarks are symbols, words, designs, or other indicators of source that identify and distinguish the source of goods or services from those of others. (10) Trademark law prevents others (traditionally competitors) from using the same or similar marks to confuse consumers and from diluting the strength of another's mark. Trademark law both at common law and under the governing statutes has long scrutinized the "morality" of marks. (11) Today, both federal and state laws deny registration to marks deemed "immoral" or "scandalous." (12) Marks with sexual content often fall within these bars to registration. Trademark law also disfavors sexual content when evaluating liability for trademark infringement and dilution. Findings of trademark dilution in particular often explicitly turn on whether a defendant's use associates a mark with sex. In this Part, I will discuss each of these aspects of trademark law.

    1. Bars to Registration

      At common law there were prohibitions on the protection of marks deemed immoral or against public policy. Trademarks were also not protected if the underlying products or businesses were themselves deemed immoral, obscene, or otherwise against public policy, even if the marks themselves were inoffensive. Many of these prohibitions have dissipated, but the longstanding refusal to register marks deemed immoral or scandalous continues today. (13) The governing Lanham Act explicitly denies federal registration to marks if they "consist[] of or comprise[] immoral ... or scandalous matter." (14) Most states also deny registration to marks deemed immoral or scandalous. (15) Even though trademark infringement under state and federal laws can be established if a mark is not registered, registration (federal registration, in particular) provides many benefits for mark holders, including nationwide priority if a mark is federally registered. (16)

      The Lanham Act does not define what constitutes an "immoral" or "scandalous" mark. Because what is "immoral" is difficult to assess, examining attorneys at the U.S. Patent and Trademark Office (USPTO) and courts have often treated the exclusions for immoral and scandalous marks as the same. (17) Courts and the USPTO have defined something as scandalous if it is "shocking to the sense of propriety, offensive to the conscience or moral feelings, or calling out for condemnation." (18) Marks are also deemed scandalous if they are simply "vulgar." A mark is vulgar if it is "lacking in taste, indelicate, [or] morally crude." (19) The meaning of the mark is determined by the contemporary understanding of the word and contemporary attitudes. (20) Even though what is scandalous or immoral is to be judged from the perspective of a substantial composite of the public, (21) the analysis leaves much room for the personal biases of examining attorneys and judges to form the basis of a denial of registration. Moreover, the decision is most often made by a sole attorney at the USPTO. The examining attorneys are the ones who make the initial determinations of eligibility for registration, and their decisions (unless appealed) are final. Many rejections are not appealed to the Trademark Trial and Appeal Board (TTAB) (the administrative body that reviews decisions of the examining attorneys), and even fewer are appealed from the TTAB to the Federal Circuit or federal district courts. Thus, many more marks are denied registration than it appears from the number of published appeals of these rejections.

      The list of absurd and contradictory decisions of what constitutes a scandalous or immoral mark by the TTAB, the Federal Circuit, and other courts is long and not entirely reconcilable. (22) Nevertheless, one can glean some insights from reading these decisions together. The three dominant categories of marks deemed scandalous or immoral are those that refer to a specific religion in the context of selling a forbidden item under that religion's precepts (such as Koran as a mark for wine), (23) marks referring to defecation or urination, and marks referring to sex. (24) Given the topic of this symposium, I will focus only on the last category.

      Familiarity with the rulings denying registration on the basis of references to sex or sexual organs leads to several conclusions. First, marks showing actual nudity or drawings that depict genitalia are likely to be denied registration. For example, the USPTO rejected the use of a photograph of a naked man and woman to identify a swingers group (referring to sexual partner switching, not to hipsters or the dancing style) and the Court of Customs and Patent Appeals (the predecessor to the Federal Circuit) affirmed the rejection. (25) In...

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