Posted by Eugene Volokh:
Amici Briefs in the Free Speech / Trademark Injunction Case:
http://volokh.com/archives/archive_2006_07_23-2006_07_29.shtml#1153781932
I'm delighted to say that Stanford law professor -- and intellectual
property expert -- Mark Lemley was good enough to submit a
[1]friend-of-the-court brief opposing the injunction against "any
comments that could be construed as to disparage [a trademark]", in
our [2]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 was also good enough to submit another
[3]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.
References
1. http://volokh.com/files/freecyclelemleybrief.pdf
2. http://www.volokh.com/posts/1152914614.shtml
3. http://volokh.com/files/freecyclepostbrief.pdf
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