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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.

Bill Poser (mail) (www):
I agree completely that the injunction violates the First Amendment and hope that the appeal succeeds. I am curious, however, as to what the appropriate action would b, if any, in a case in which someone clearly owns a trademark and another party calls the trademark into question in such a way as to interfere with the business or other lawful purpose of the trademark holder. Could the trademark holder sue for slander of title?
8.14.2007 4:47pm
WHOI Jacket:
Well, I'll google around for it and then fedex you the results. I've got some xeroxs for a backup copy. This will put a band-aid on the situation
8.14.2007 5:00pm
Hoosier:
"Genericide"? What is it?

(Sorry. Non-lawyer.)
8.14.2007 5:08pm
CJW (mail) (www):
Eugene, do you happen to know who was drawn for the panel?
8.14.2007 5:10pm
Steve2:
This makes me curious about the "genericide" of Coke. I grew up in Atlanta with the understanding that the Coke company makes a brand of Coke-style (brown, kola-flavored) coke (beverage with bubbles that isn't beer) called Coke, along with other products such as a root-bear style coke called Barq's, while their competitors at Pepsico make a Coke-style coke called Pepsi. I am routinely told by people, such as my father and most Minnesotans, that I'm an idiot and "Coke" refers only to 1 company and a small handful of products (Coke, Diet Coke, Cherry Coke, etc.) So does that make Coke partially-genericided?
8.14.2007 5:14pm
Hoosier:
So "genericide" = "genericize"?
8.14.2007 5:20pm
Eugene Volokh (www):
CJW: Judges O'Scannlain, Hawkins, and Wardlaw.

Hoosier: Wikipedia accurately reports: "The process by which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time where a mark is not used as a trademark (i.e. where it is not used to exclusively identify the products or services of a particular business) [other possible causes of genericide omitted -EV] ...." It's a little joke -- when a trademark is killed because the word has been made generic, it has fallen victim to genericide.
8.14.2007 5:33pm
David M. Nieporent (www):
I am curious, however, as to what the appropriate action would b, if any, in a case in which someone clearly owns a trademark and another party calls the trademark into question in such a way as to interfere with the business or other lawful purpose of the trademark holder. Could the trademark holder sue for slander of title?
Assuming that the "another party" is not a competitor but a private citizen, there probably isn't an appropriate action, any more than there is if someone goes around saying "Don't buy Xerox. I hate them, and you will too." The law doesn't provide remedies for all speech people dislike, even if it causes economic harm.
8.14.2007 6:13pm
JosephSlater (mail):
I don't know this area of law, but I do know that if you say, "Aqualung," I think of the classic six-note intro guitar riff to the Jethro Tull song of that name.
8.14.2007 6:50pm
Steve H (mail):

I am curious, however, as to what the appropriate action would be, if any, in a case in which someone clearly owns a trademark and another party calls the trademark into question in such a way as to interfere with the business or other lawful purpose of the trademark holder. Could the trademark holder sue for slander of title?


Yes. If the person intended to harm the trademark rights, and made false statements of fact and either knew the statements were false or recklessly disregarded whether those statements were true or false, and if the statements actually caused damage, then the speaker could be liable for slander of title and/or injurious falsehood.

It would have to be a statement of fact, though. A statement like "I hate Xerox" wouldn't count, because that would be an expression of opinion. And if the person is not a competitor, it would be hard to imagine why the person would knowingly tell lies with the intent of degrading someone's trademark rights.
8.14.2007 7:06pm
Andy Freeman (mail):
> And if the person is not a competitor, it would be hard to imagine why the person would knowingly tell lies with the intent of degrading someone's trademark rights.

Don't have much experience with people, do you?

Competition isn't the only reason why people dislike or wish to cause harm.

Besides, does genericide require lying? I thought that it only required using the trademark as a generic, aka "pass me a kleenex" and being completely happy to receive something made by Scott.
8.14.2007 9:17pm
Hei Lun Chan (mail) (www):
Am I committing genericide if I name my son Scott? What if I named him Kleenex?
8.14.2007 11:42pm
Fub:
teve2 wrote at 8.14.2007 4:14pm:
This makes me curious about the "genericide" of Coke. I grew up in Atlanta with the understanding that the Coke company makes a brand of Coke-style (brown, kola-flavored) coke (beverage with bubbles that isn't beer) called Coke, along with other products such as a root-bear style coke called Barq's, while their competitors at Pepsico make a Coke-style coke called Pepsi.
I recall dialogs in the south that went something like this:

Diner: I'll have a coke.

Waitress: What kind?

Diner: What have you got?

Waitress: Dr. Pepper, RC, Pepsi and Coke.

Of course, if you're having deep fried fish and a Moon Pie, RC is the only way to go.
8.15.2007 2:30am
Lev:
Hoosier:


Hoosier: Wikipedia accurately reports: "The process by which trademark rights are diminished or lost as a result of common use in the marketplace is sometimes known as genericide. This process typically occurs over a period of time where a mark is not used as a trademark (i.e. where it is not used to exclusively identify the products or services of a particular business) [other possible causes of genericide omitted -EV] ...." It's a little joke -- when a trademark is killed because the word has been made generic, it has fallen victim to genericide.


The important thing to remember is that the purpose of a trademark is to serve as a designation of a specific origin for a specific product. Xerox R copiers are the product of Xerox Corporation, not of Canon, Ricoh etc. Ivory R soap is the product of Procter and Gamble, not anyone else.

Genericide is, at its fundamental base, the name of the specific product from the specific company becoming the generic name for the product class from any company. The trademark has lost its meaning as a designation of the source of the specific product being a specific source. The trademark has become generic and by that, has been killed as a designation of source.

But, resurrection can occur, as is shown by the old example of the Singer Sewing Machine.

Singer, registered trademark for sewing machines, became the generic descriptor for any sewing machines from any source. The trademark registration was cancelled. Eventually, over time, the Singer Company perservered and survived when its many competitors died, and was able to restablish Singer as a registered trademark for Singer Brand sewing machines produced by the Singer Sewing Machine Company.

With respect to Eugene's list, thusly:


"Kleenex™," perhaps, or "Xerox™," or "Starbucks™," or "Google™," or "Aqua-Lung™," or "Hot Wheels™," or "Miracle Whip™


Each of those is incorrect. They are all registered trademarks - US Patent and Trademark Office, R in a circle, the strongest type of trademarks.

Superscript TM is used by companies trying to establish a word as a trademark so that they can demonstrate the word is an indicator of specific origin for the product in question, and thus can be registered in the PTO, after searches to determine conflicts if any and contests over the nature of the registration. Earlier, Lexis vs. Lexus. More recently, Apple (music) vs Apple (iPod)
8.15.2007 3:49am
a knight (mail) (www):
Genericide is not proper to use describing this.

The suffix, cide, comes from the latin, cida 'killer', or cidum 'a killing', and both stem from caedere 'to kill', 'to cut down'.

It may seem cute and appropriate, but killing is not descriptive of what has happened when a brand name becomes synonymous with a generic product type. This can only occur when a specific branded product has achieved name-recognition dominance; when it stands uncontested as King of the Hill in the Free Marketplace. This cannot be properly construed as killing.

Words have power, and this power does affect society. Accepting the term genericide as a proper descriptive term in this instance is not neutral. It gives power to the side of Corporations defending what they believe to be copyuright infringement.

Ubiquity does not come wrapped in a homicidal envelope.
8.15.2007 7:04am
John425:
Am not a lawyer and am over 60 so I may be one of a few that remember that "Thermos" lost some of it's trademark rights because the word "Thermos" passed into the language as a generic word for the hot bottle process. Can anyone shed some more memory/light on that?
8.15.2007 12:46pm
Justin Levine:
Professor V. -

The reason this case hasn't attracted much attention is because most people are now resigned to the fact that the legal system has elevated intelectual property rights above free speech and other basic freedoms. There are so many examples of this abuse that most people no longer have the inclination to fixate on a single case anymore. [The effective erradication of fair use, the expansion of copyright into non-fixed works such as choreography and yoga positions, the abuse of our patent system, the rise of 'trade secret' law that in many ways now supercedes the scope of patents, trade libel, rights of 'publicity'...I could go on and on.]

When you have an entire information war going on, it is hard to get people to fixate on a single mugging in an alleyway.
8.15.2007 5:39pm