Posted by Eugene Volokh:
Ninth Circuit Dissolves Injunction Barring Defendant "from Making Any Comments
That Could Be Construed as To Disparage [A Trademark]":
http://volokh.com/archives/archive_2007_09_23-2007_09_29.shtml#1190828574
I've blogged [1]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 [2]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).
References
1. http://volokh.com/posts/1152914614.shtml
2. http://caselaw.findlaw.com/data2/circs/9th/0616219p.pdf
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