The Volokh Conspiracy

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.