pageok
pageok
pageok
Injunction Against "Any Comments That Could Be Construed As To Disparage [a Trademark]" Stayed:

This remarkable injunction, which I discussed here, was stayed yesterday by the Ninth Circuit, pending the resolution of the defendant's appeal.

I'm working on this case on the defendant's side in my capacity as academic affiliate for Mayer Brown Rowe & Maw; on Monday, I hope to blog our merits brief on appeal, and two amici briefs that were filed on our side.

Enoch:
Disparaging the boot is a bootable offense!
7.21.2006 12:30pm
Bored Lawyer (mail):
At the outset let me admit that (1) I am an IP lawyer, primarily involved in trademark litigation and (2) I have not read the brief. I glanced quickly at the comments section of the prior post, but the comments thread was closed, so here I am.

To me, apart from the 1st Amendment issues, is a more fundamental one: trademark infringement and dilution require COMMERCIAL acts -- i.e. a "use in commerce" for infringement and ""commercial use" for dilution. 15 U.S.C. 1114(1), 1125(a), 1125(c). Has that law changed when I wasn't looking? (I know Congress is considerning it.)

Otherwise, casual use of a trademark in conversation, writing and blogging is outside the scope of what the law protects -- even though such conversation could well cause a trademark to become generic.

The defendant here is simply encouraging completely lawful (albeit harmful to the trademark) activity -- non-commercial speech.
7.21.2006 1:30pm
BTD_Venkat (mail) (www):
I don't see what's so problematic about the injunction. An after-the-fact penalty on comments disparaging a company may be OK. Given that the parties are engaged in litigation I would think the judge has more leeway with respect to prior restraints. (The order is certainly problematic but it doesn't seem totally out of bounds.)

I don't see Mayer Brown's interest in the case. If anything I would expect them to be on the other side?
7.21.2006 1:35pm
Bored Lawyer (mail):
Where is the "disparagement" in what the defendant is doing? He is simply encouraging people to use a trademark as a generic term -- which it is close to anyway -- which in turn will deprive the other side of TM rights. So what? That is precisely what happened in many famous cases, including ASPRIN. The public is entitled to appropriate a word and use it any way it wants. I don't see how encouraging lawful activity can be enjoined.
7.21.2006 2:12pm
BTD_Venkat (mail) (www):
Well the Judge's order is limited to statements that could reasonably be construed as "disparaging". As such, if Defendant is not making these types of comments than no harm no foul. (I would separate the validity of the order from the issue of whether Defendant violated it.)

I took another look at the Order and there aren't many factual findings there. A better angle may have been tarnishment.

The Order could have been more thorough and it's borderline but it's not earthshattering. It will be interesting to see how it pans out.
7.21.2006 2:22pm
Bored Lawyer (mail):
I just read the order and it is a travesty. No mention of dilution, jus straight up trademark infringement. The district court quotes the relevant statutes, but does not bother applying the elements:

1) Sec. 1114(1) applies ONLY to registered marks. The registrations are pending. That is reason enough to lost that claim. But Section 1125(a) does cover unregistered marks.

2) Both sections require an unauthorized use "in connection with" the sale, offer for sale, advertising and/or distribution of goods or services?

How has this element been met here? What goods and services was the defendant offering or advertising?

3) Likelihood of confusion is expressly mentioned in both statutes, and is recognized for over a century as the heart of a TM claim.

Who, pray tell, is confused by what the defendant did here? What are they confused about?

My dog could have written a better opinion. My dead dog.
7.21.2006 2:33pm
Tal Benschar (mail):
Well the Judge's order is limited to statements that could reasonably be construed as "disparaging".

No, the order specfically requires the defendant to remove postings from his website, and bars him from making similar public comments. If you review the postings here:

http://www.volokh.com/posts/1152914614.shtml

you will see that none of them are disparaging in the classical sense -- all they do is argue that the TM at issue is generic, encourages people to use it in that way, and encourages people to write to the USPTO to express their opinion that it is generic.
7.21.2006 2:38pm
Bobbie:
Is your client okay with you blogging about its case? The other side is likely reading this blog. If I were the client, I can't imagine I'd feel comfortable about that, especially if people in the comments point out weaknesses in your argument that the other side might not have thought of.
7.21.2006 2:49pm
BTD_Venkat (mail) (www):
Who, pray tell, is confused by what the defendant did here? What are they confused about?

My dog could have written a better opinion. My dead dog.


I definitely agree that the order is on shaky ground (uncle!). The fact that the action in AZ was filed in retaliation for stuff going on in N.D. Cal. is also troubling.

This isn't a great case to illustrate this but (1) Judges have discretion in dealing with this stuff (they issue gag orders all the time, for example) and (2) product (and mark ?) disparagement has gained acceptance in the courts. (I agree that his statements weren't disparaging, but going forward that's all the order restricts. Maybe the take down portion can be construed as some sort of penalty. Still, tough to argue this.)

Maybe Freecycle should have taken the contractual/fiduciary angle? Defendant would only be making these statements based on his knowledge as manager of IP for freecycle. Of course it does not make sense that the manager can go out and encourage people to undermine the mark. (None of this is in the order and the case seems to be focusing on the TM issue, which is problematic for Freecycle.) This is the approach I would have taken.

If the 9th Cir. reverses, will they take it away from this judge?
7.21.2006 3:01pm
procrastinating clerk (mail):
Bobbie,

The briefs have been filed. Besides, if the "other side" is trolling through the comments section of a blog for legal arguments, then they've already lost.
7.21.2006 3:24pm
The Arbusto Spectrum:
Off topic, but this guy looks like he could use a lawyer:

NEW YORK, July 21 (UPI) -- A New York appeals court says it was permissible for
a judge to fine a potential juror $1,000 for calling a defendant a "scumbag."
Justice William Wetzel fined Stephen Caruso during a discussion in Wetzel's
courtroom about Robert Sanford, charged with kidnapping a driver using a fake
gun.
Caruso said he had been held up three times at gunpoint and, looking at the
defendant, said, "I think he is a scumbag," the New York Post reported.
Wetzel ordered him out of court but held him in contempt and fined him when
Caruso approached the bench.

Is there no free speech issue here?
7.21.2006 4:48pm
Aultimer:


held him in contempt and fined him when Caruso approached the bench.

Is there no free speech issue here?

Yes, there is no free speech issue here.
7.21.2006 5:14pm
Anderson (mail) (www):
Besides, if the "other side" is trolling through the comments section of a blog for legal arguments, then they've already lost.

What about the transformative effect of the internet? Heresy, sir!
7.21.2006 10:57pm