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.
Related Posts (on one page):
- Ninth Circuit Dissolves Injunction Barring Defendant "from Making Any Comments That Could Be Construed as To Disparage [A Trademark]":
- Injunction Barring Defendant "From Making Any Comments That Could Be Construed As To Disparage [a Trademark]":
- Amici Briefs in the Free Speech / Trademark Injunction Case:
- How a Speech-Restrictive Injunction Can Be Used Against Organizations Who Aren't Even Parties:
- Injunction Against "Any Comments That Could Be Construed As To Disparage [a Trademark]" Stayed:
- Court Bars Defendant "From Making Any Comments That Could Be Construed As To Disparage [a Trademark]":
To me, apart from the 1st Amendment issues, is a more fundamental one: trademark infringement and dilution require COMMERCIAL acts -- i.e. a "use in commerce" for infringement and ""commercial use" for dilution. 15 U.S.C. 1114(1), 1125(a), 1125(c). Has that law changed when I wasn't looking? (I know Congress is considerning it.)
Otherwise, casual use of a trademark in conversation, writing and blogging is outside the scope of what the law protects -- even though such conversation could well cause a trademark to become generic.
The defendant here is simply encouraging completely lawful (albeit harmful to the trademark) activity -- non-commercial speech.
I don't see Mayer Brown's interest in the case. If anything I would expect them to be on the other side?
I took another look at the Order and there aren't many factual findings there. A better angle may have been tarnishment.
The Order could have been more thorough and it's borderline but it's not earthshattering. It will be interesting to see how it pans out.
1) Sec. 1114(1) applies ONLY to registered marks. The registrations are pending. That is reason enough to lost that claim. But Section 1125(a) does cover unregistered marks.
2) Both sections require an unauthorized use "in connection with" the sale, offer for sale, advertising and/or distribution of goods or services?
How has this element been met here? What goods and services was the defendant offering or advertising?
3) Likelihood of confusion is expressly mentioned in both statutes, and is recognized for over a century as the heart of a TM claim.
Who, pray tell, is confused by what the defendant did here? What are they confused about?
My dog could have written a better opinion. My dead dog.
No, the order specfically requires the defendant to remove postings from his website, and bars him from making similar public comments. If you review the postings here:
http://www.volokh.com/posts/1152914614.shtml
you will see that none of them are disparaging in the classical sense -- all they do is argue that the TM at issue is generic, encourages people to use it in that way, and encourages people to write to the USPTO to express their opinion that it is generic.
I definitely agree that the order is on shaky ground (uncle!). The fact that the action in AZ was filed in retaliation for stuff going on in N.D. Cal. is also troubling.
This isn't a great case to illustrate this but (1) Judges have discretion in dealing with this stuff (they issue gag orders all the time, for example) and (2) product (and mark ?) disparagement has gained acceptance in the courts. (I agree that his statements weren't disparaging, but going forward that's all the order restricts. Maybe the take down portion can be construed as some sort of penalty. Still, tough to argue this.)
Maybe Freecycle should have taken the contractual/fiduciary angle? Defendant would only be making these statements based on his knowledge as manager of IP for freecycle. Of course it does not make sense that the manager can go out and encourage people to undermine the mark. (None of this is in the order and the case seems to be focusing on the TM issue, which is problematic for Freecycle.) This is the approach I would have taken.
If the 9th Cir. reverses, will they take it away from this judge?
The briefs have been filed. Besides, if the "other side" is trolling through the comments section of a blog for legal arguments, then they've already lost.
Is there no free speech issue here?
Yes, there is no free speech issue here.
What about the transformative effect of the internet? Heresy, sir!