Amici Briefs in the Free Speech / Trademark Injunction Case:

I'm delighted to say that Stanford law professor — and intellectual property expert — Mark Lemley was good enough to submit a friend-of-the-court brief opposing the injunction against "any comments that could be construed as to disparage [a trademark]", in our The Freecycle Network, Inc. v. Oey case. The brief was written on behalf of 38 intellectual property law professors (including Mark himself), plus the Electronic Frontier Foundation. The brief reasoned that "The District Court's Opinion Wrongly Concludes That Merely Talking About a Trademark Can Infringe Trademark Rights," and that "The District Court's Order Interferes With the Speech Rights of Defendants, Amici, the Press, and Others."

My coblogger David Post and Los Angeles appellate lawyer Bruce Adelstein were also good enough to submit another friend-of-the-court brief, on behalf of InstaPundit (Glenn Reynolds), Wikipedia cofounder Jimmy Wales, author and professor Larry Lessig, cyberjournalist Declan McCullagh, Trademark Law blog author and trademark lawyer Martin Schwimmer, and law professors Lauren Gelman, Jamie Boyle, Jonathan Zittrain, and David Post himself. Here's what seems to me the heart of his brief (which is shorter and in some ways less technical than Mark's, and thus more easily subject to excerpting):

The district court concluded that, because plaintiff had "established a recognizable logo and name . . . through over three years of use," and because defendant "recognized [plaintiff's] legitimate trademark rights" in the past, any "comments that could be construed as to disparage upon the possible trademark" rights associated with that logo and name would likely constitute an actionable infringement of those rights. The breadth of this principle, and its potential for silencing constitutionally-protected speech on and off the Internet, is quite breath-taking.

For instance, the law professors among us might opine, in a media interview, an op-ed article, or a classroom discussion about the principles of trademark "genericide," that some registered U.S. trademark --- "Kleenex™," perhaps, or "Xerox™," or "Starbucks™," or "Google™," or "Aqua-Lung™," or "Hot Wheels™," or "Miracle Whip™," etc. --- is not valid because of its generic use; one of the public interest advocacy groups among us might make the same (or the contrary) argument in a press release published on its web site; one of the journalists among us might take up the argument (for or against) in a news analysis or opinion column; so might a commenter or editor at an online encyclopedia, or at one of the many thousands of blogs and websites across the Internet at which questions of trademark law and policy are discussed.

Our comments might look very much like the defendant's in this case: "In my opinion, the word 'xerox' is generic and therefore in the public domain. The best way to keep 'xerox' (and the terms 'xeroxed,' 'xeroxing,' etc.) in the public domain is for as many people and groups as possible to continue to use the terms generically."

It might even be the case that we had changed our minds about this very question in the past --- surely something we have all done many times, and which is both a part of, and in many ways the point of, the public debate on these questions.

Under the district court's reasoning, our comments alone could be "construed as disparaging the possible trademark" associated with the "Xerox" name and subject us to liability for infringing the "Xerox" trademark. And this would be so even though we offered no goods or services in competition with Xerox, Inc., nor confused or misled any consumers about the source or origin of any goods or services.

And under Plaintiff's reasoning, each such statement --- even in a law review article, a newspaper column, or a web site --- would constitute commercial speech, simply because it "draw[s] 'attention to [Xerox's services]' and directly impacts [Xerox's] ability to attract new [users], and retain current [users] and sponsors by harming [Xerox]'s commercial reputation via its Marks," and "because it relates to [Xerox's] Marks and the public's perception of [Xerox]."

We cannot believe that the First Amendment tolerates such a restriction on the rights of academics, advocates, or public-minded citizens to express their opinions about the validity vel non of specific trademark claims. Trademark rights, of course, are public rights; they are granted by the people through our duly authorized representatives in the legislatures, courts, and administrative offices. Unfettered public discussion about those rights --- about how law is made and applied, in the abstract and in the particular, and about whether it is or is not being made and applied (in the speaker's opinion) correctly --- lies at the very heart of the First Amendment freedom of speech. It is difficult to imagine an Order more at odds with this principle than the one issued by the district court in this case, and we respectfully urge you to overturn it.

Bored Lawyer (mail):
Point I of the brief makes the same points I made in a prior post -- that none of the statutory elements of trademark infringement have been made out.

Isn't there a rule that federal courts are supposed to avoid Constitutional questions if possible? If the case can be resolved on statutory grounds, isn't that preferable? (I mean from the point of view of federal jurisprudence. Obviously, First Amendment issues are sexier for a blog than plain vanilla trademark law.)
7.24.2006 8:04pm
Eugene Volokh (www):
Federal courts sometimes avoid constitutional questions, and sometimes they don't; the rule you point to isn't a categorical rule, though it is often a strong preference.

But it's certainly the case that lawyers (both representing the parties and the amici) can't avoid these questions. We have to brief both the statutory issues and the constitutional ones, just in case those are the ones that will be winners for us.
7.24.2006 8:28pm
Master Shake:
EV- This is completely an aside, but I notice that you refer to both of the briefs as "friend-of-the-court" briefs. I've long found it irritating that news articles and the like refer to Amicus briefs as "friend-of-the-court" briefs - because, while being an accurate literal translation of "Amicus Curiae", it is a decidedly unhelpful translation, imparting essentially zero new information to uninformed readers. If the reader knows what an "amicus brief" is, the translation is unnecessary (and a bit insulting), and if the reader doesn't know what an amicus brief is, they certainly aren't going to have any greater understanding of what was filed by knowing that it's refered to as a "friend-of-the-court" brief. So I'm particularly surprised to see you use the term here on a legal blog.

Just my two cents.
7.24.2006 9:24pm
Bored Lawyer (mail):
I understand the briefing part. The other issue I will try to look up -- I thought it was a firmer rule than you are letting on.

In any event, and more importantly to the blog, the case does not really illustrate anything about a conflict between the 1st Amendment and TM law, because the opinion is so poorly reasoned on the latter that it proves nothing really about any conflict. What it really proves is that when you have a moron of a judge who cannot apply the law properly, then personal rights may be in jeopardy.
7.24.2006 9:31pm
Eugene Volokh (www):
Master Shake: My sense is that some people know the briefs as "friend-of-the-court briefs" rather than "amicus briefs," so it's good to use both terms to make this clearer. I agree that the term "friend-of-the-court" has little relation (not none but little) to what the normal English phrase "friend of the ___" would mean.
7.24.2006 10:29pm
But what if they submitted ten times fewer friend of the court briefs? Is the same as the case having one tenth the number of supporters? What then?!?!?!
7.24.2006 11:05pm
Among the things I don't get:

§ 1125. False designations of origin, false descriptions, and dilution forbidden

(4) The following shall not be actionable under this section:
(A) Fair use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark.
(B) Noncommercial use of a mark.
(C) All forms of news reporting and news commentary.

If that is the case with a famous mark, which is to say an ® as opposed to an application for a trademark, how can there be even the slightest possibility of success on the merits for saying an applied for mark is generic is a disparagement of anything? And why don't Oeyvey's comment falls into "news commentary", by intent if not literal language?


§ 1125. False designations of origin, false descriptions, and dilution forbidden
How Current is This?

(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

How the company that purports to have a mark for freecyling ever going to establish any of those elements vis-a-vis Oeyvey?
7.25.2006 1:18am