September 26, 2007 | By Richard Esguerra

Court defends honest discussion of proposed trademark in <i>Freecycle v. Oey</i>

EFF welcomes a victory for online free speech in Freecycle v. Oey, a case from the Ninth Circuit Court of Appeals upholding the right to engage in open discussion about words companies are trying to trademark, without the fear of being sued by the companies under trademark law. EFF signed onto the amicus brief written by Stanford Law Professor Mark Lemley arguing that such discussions were not trademark violations.

The Freecycle Network Inc. (TFN) operates, a hub site for localized groups of people seeking a quick and easy way to give and receive stuff for free. TFN filed a federal trademark application for the term "freecycle." Tim Oey, once involved with TFN, took to the Internet to urge people to oppose TFN's effort to trademark the term, arguing that freecycling should be a grassroots movement. In emails to other TFN moderators and posts to message boards, he argued that the word "freecycle" should remain generic, free for anyone to use as a way to refer to the practice of giving away goods online.

TFN sued to squelch Oey's speech and moved for a court injunction prohibiting him from expressing his opinions. TFN argued that he had infringed and disparaged their trademark and managed to convince a district court judge in Arizona to grant the injunction. On appeal, however, the Ninth Circuit ruled that Oey's honest opinion about Freecycle's trademark rights could not be stamped out by a claim of trademark infringement under the Lanham Act. First, the decision correctly notes that Oey did not make any commercial use of the alleged "freecycle" mark in his emails and Internet postings. Second, it noted that there was no evidence that his activities were likely to confuse consumers or otherwise mislead the public. And third, and perhaps most importantly, the Court wrote:

Nor does the [Lanham 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... TFN?s mere disagreement with Oey?s opinion and frustration with his activities cannot render Oey liable under the Lanham Act.

Ultimately, this decision is great news for consumers and users engaged in honest Internet discussions and stands as a sound warning to trademark owners not to misuse the law in attempts to squelch speech about their purported marks.

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