Court Bars Defendant "From Making Any Comments That Could Be Construed As To Disparage [a Trademark]":

In The Freecycle Network, Inc. v. Oey, a federal district court issued a preliminary injunction ordering Tim Oey not to "mak[e] any comments that could be construed as to disparage upon Freecycle's possible trademark and logo." The court further ordered Oey "to remove all postings from the internet and any other public forums that he has previously made that disparage Freecycle's possible trademark and logo." (Oey is a former volunteer with The Freecycle Network who eventually concluded that "freecycle" should be a generic term, and not a privately owned trademark, and who has been trying to persuade others of that. Whether TFN actually has the trademark rights has not yet been finally adjudicated; it's part of a separate lawsuit in a different court.)

The order "specifically refers to, but is not limited to, the exhibits used by Freecycle in this case," which include, but are not limited to, statements such as,

I have encouraged people to use term freecycle as a generic term which would block The Freecycle Network (TFN), and all others, from holding a trademark on the term in the area of freecycling services offered on the web.

This would mean that everyone could use the term freecycle and no one could stop anyone else from using it.

and

The best way to keep freecycle in the public domain is for as many people and groups as possible to continue to use the term generically.

If you feel that the term freecycle is generic, you can let the USPTO know by sending a letter to: [the Commissioner of Trademarks] address.

Mayer Brown Rowe & Maw, the firm for which I'm a part-part-part-time Academic Affiliate, is handling the appeal to the Ninth Circuit; here's the brief, which was written by Don Falk with the help of Ian Feinberg, Dennis Corgill, summer associate (and my former student at Mayer) Pete Patterson, and me.

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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.

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How a Speech-Restrictive Injunction Can Be Used Against Organizations Who Aren't Even Parties:

I noted last week that the Ninth Circuit had stayed the injunction against "any comments that could be construed as to disparage [a trademark]" pending appeal. I didn't have time then to note that Mayer Brown Rowe & Maw (the firm with which I'm working as a part-part-part-time Academic Affiliate) had filed an interesting supplemental brief supporting the stay petition.

It turns out that in 2005 Grist Magazine published an article about The Freecycle Network, and put up a brief summary on its accompanying blog. Tim Oey, the defendant in the Freecycle Network case, then posted some comments attached to that blog post. After the injunction was issued, The Freecycle Network's lawyers sent Grist Magazine a letter stating, "In accordance with the Order [i.e., the injunction], we request that you remove Tim Oey's posting located at [address]. In light of the Court's Order, we request that you remove the posting by no latter thaqn Friday, July 14, 2006."

Grist said no, pointing out (among other things) that "this Arizona order does not apply to Grist, which simply exercised its First Amendment rights in discussing, and facilitating discussions about, issues of public concern relating to the environment. If it were applied to Grist, which was not a party to that Arizona proceeding and furthermore was not afforded any prior notice of the motion, we believe it would be in violation of Grist’s rights to free speech and to due process under the First and Fifth Amendments." (The quotes are all from attachments to the supplemental brief, which is a public document.)

And then Grist's lawyers learned of the appeal from the initial post on this blog about the case, and were good enough to pass along the correspondence to Mayer. The result was the supplemental brief, which used the TFN-Grist exchange to "underscore the speech-suppressing aspects of the injunction." We don't know to what extent the supplemental brief influenced the decision to grant the stay, but we were certainly glad to have this extra evidence supporting our criticisms of the injunction.

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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.

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Injunction Barring Defendant "From Making Any Comments That Could Be Construed As To Disparage [a Trademark]":

I blogged about this case last summer, and the Ninth Circuit will be hearing the argument tomorrow. Don Falk, an appellate partner at Mayer, Brown, Rowe & Maw (which is handling the case pro bono), is arguing it; I'm a part-part-part-time academic affiliate at the firm, so I had the pleasure of working with Don, Ian Feinberg, Dennis Corgill, and Pete Patterson on the brief.

For those who are interested in the case -- and I'm surprised it hasn't gotten more attention -- here's the opening brief, an amicus brief written by Mark Lemley on behalf of a bunch of intellectual property law professors and the Electronic Frontier Foundation, and an amicus brief filed by our own David Post and L.A. appellate lawyer Bruce Adelstein on behalf of (among others) InstaPundit, Larry Lessig, and Wikipedia cofounder Jimmy Wales. It's a fascinating case, and I'm surprised it hasn't gotten more attention.

Here's an excerpt from the Post brief that captures the matter well, I think:

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.

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