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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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Ninth Circuit Dissolves Injunction Barring Defendant "from Making Any Comments That Could Be Construed as To Disparage [A Trademark]":

I've blogged before about this case, Freecycle Network, Inc. v. Oey, which Mayer Brown — the firm with which I'm affiliated part-part-part-time — is handling pro bono, and on which I helped. The Ninth Circuit just dissolved the injunction; here are some relevant excerpts (some paragraph breaks added):

[Tim] Oey initially supported TFN’s claim to the FREECYCLE mark. Experiencing a change of heart and convinced that the term should remain in the public domain, Oey later urged TFN to abandon its efforts to secure the mark, conveying his feelings in an August 8, 2005, email to fellow TFN group moderators. In the following weeks, Oey made various statements on the Internet that TFN lacked trademark rights in “freecycle” because it was a generic term, and he encouraged others to use the term in its generic sense and to write letters to the United States Patent and Trademark Office (“PTO”) opposing TFN’s pending registration....

In April 2006, TFN sued Oey, seeking an injunction and damages, alleging that Oey’s statements constituted contributory trademark infringement and trademark disparagement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), as well as injurious falsehood, defamation, and intentional interference with a business relationship under Arizona law. The district court granted a preliminary injunction based solely on TFN’s § 1125(a) claims, apparently conflating TFN’s allegations of contributory trademark infringement and trademark disparagement....

A) Trademark Infringement

[The alleged] facts -- even if true — simply do not demonstrate that TFN has a likelihood of success on its § 1125(a) infringement claim.... Oey’s actions likely did not constitute a “use in commerce,” 15 U.S.C. § 1125(a)(1), as the record in this case does not indicate they were made to promote any competing service or reap any commercial benefit whatsoever.... []“[Trademark law’s ‘use in commerce’] refers to a use of a famous and distinctive mark to sell goods [or services] other than those produced or authorized by the mark’s owner.”[] Rather, based on his view that the term was generic, Oey simply expressed an opinion that TFN lacked trademark rights in the term “freecycle” and encouraged likeminded individuals to continue to use the term in its generic sense and to inform the PTO of their opinions.

Furthermore, even if Oey’s statements could somehow be construed to be a “use in commerce,” such use was not likely to cause confusion, mistake, or deceive anyone as to the connection of Oey’s services (or any other) with TFN.... [O]ur review of the record identifies no potential likelihood of confusion resulting from Oey’s activities. Oey simply did not use TFN’s claimed mark or a similar mark in any manner likely to confuse the relevant public: his statements neither mention any competing service or product, nor claim any affiliation with TFN.

Finally, Oey’s statements also do not satisfy the requirements for false advertising, misrepresentation, or unfair competition under § 1125(a)(1)(B). There is no evidence that Oey’s statements were made in “commercial advertising or promotion.” And, even if such evidence existed, § 1125(a)(1)(B) creates liability only for product disparagement -— i.e., misrepresentation of “the nature, characteristics, qualities, or geographic origin” of “another person’s goods, services, or commercial activities.” ...

B) Trademark Infringement

TFN’s complaint also alleged “trademark disparagement” under § 1125(a). However, no such claim exists under the Lanham Act....

[But e]ven assuming TFN’s trademark disparagement claim were somehow cognizable under the Lanham Act, ... Oey’s conduct does not satisfy TFN’s asserted elements. Oey’s statements were not “false.” At worst, Oey offered an erroneous legal opinion (by a layperson) that TFN lacked trademark rights in the term “freecycle.” “Statements of opinion are not generally actionable under the Lanham Act.”

To this day, there has been no formal determination that TFN has trademark rights in the term “freecycle.” The mark is not yet registered and both an opposition to registration and action seeking a declaration that TFN lacks trademark rights in the term are currently pending. Oey’s statement that TFN lacked trademark rights in the term therefore cannot be considered a false statement of fact. []“Absent a clear and unambiguous ruling from a court or agency of competent jurisdiction, statements by laypersons that purport to interpret the meaning of a statute or regulation are opinion statements, and not statements of fact.”[]

TFN and the district court emphasize Oey’s prior support of TFN’s efforts to trademark the term, but these prior efforts do not render his subsequent statements “false.” Oey is entitled to change his mind. Until it is definitively established that TFN holds a trademark in the term “freecycle,” it cannot be false to contend that it does not....

C) Genericide

the crux of TFN’s complaint is that Oey should be prevented from using (or encouraging the use of) TFN’s claimed mark FREECYCLE in its generic sense. However, TFN’s asserted mark —- like all marks — is always at risk of becoming generic and thereby losing its ability to identify the trademark holder’s goods or services. Where the majority of the relevant public appropriates a trademark term as the name of a product (or service), the mark is a victim of “genericide” and trademark rights generally cease.... Genericide has spelled the end for countless formerly trademarked terms, including “aspirin,” “escalator,” “brassiere,” and “cellophane.” ...

Of course, trademark owners are free (and perhaps wise) to take action to prevent their marks from becoming generic and entering the public domain — e.g., through a public relations campaign or active policing of the mark’s use. The Lanham Act itself, however, contains no provision preventing the use of a trademarked term in its generic sense.

Nor does the Act prevent an individual from expressing an opinion that a mark should be considered generic or from encouraging others to use the mark in its generic sense. Rather, the use of a mark in its generic sense is actionable under the Lanham Act only when such use also satisfies the elements of a specified cause of action — e.g., infringement, false designation of origin, false advertising, or dilution. TFN’s mere disagreement with Oey’s opinion and frustration with his activities cannot render Oey liable under the Lanham Act.

Because of these holdings, the court didn't have to reach the question whether the injunction violated the First Amendment.

Congratulations to my colleagues Don Falk, Dennis Corgill, and Ian Feinberg, and my former student Pete Patterson, who worked on the brief. Congratulations and thanks also to the amici — Jamie Boyle, Lauren Gelman, Larry Lessig, Declan McCullagh, David Post, Glenn Reynolds, Martin Schwimmer, Jimmy Wales, and Jon Zittrain (represented by David and by my friend Bruce Adelstein), as well as the 38 Intellectual Property Law Professors and the EFF (represented by Mark Lemley).

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