Freecycle Network v. Oey

NOTE: The information and commentary contained in this database entry are based on court filings and other informational sources that may contain unproven allegations made by the parties. The truthfulness and accuracy of such information is likely to be in dispute. Information contained in this entry is current as of the last event mentioned in the "Description" section below; additional proceedings might have taken place in this matter since this event.

Summary

Threat Type: 

Lawsuit

Date: 

04/04/2006

Status: 

Pending

Location: 

Arizona

Disposition: 

Dismissed (partial)
Injunction Issued

Verdict or Settlement Amount: 

N/A
The Freecycle Network (TFN) is a nonprofit corporation that acts as a central administrative point for local recycling communities around the United States and operates a website at www.freecycle.org. It had been operating under this name since 2003, and in 2004 submitted... read full description
Parties

Party Receiving Legal Threat: 

Tim Oey; Jane Doe Oey

Type of Party: 

Organization

Type of Party: 

Individual

Location of Party: 

  • Arizona

Location of Party: 

  • California

Legal Counsel: 

Ashley Lynn Kirk - Hayes Soloway PC; Ian N. Fienberg, Donald M. Falk, Dennis S. Corgill, Eugene Volokh
Description

The Freecycle Network (TFN) is a nonprofit corporation that acts as a central administrative point for local recycling communities around the United States and operates a website at www.freecycle.org. It had been operating under this name since 2003, and in 2004 submitted a trademark application for the "The Freecycle Network" and "Freecycle" marks.

Tim Oey, a former volunteer at TFN became a vocal critic of TFN's attempt to trademark its name, expressing his view that "freecycle" had become a generic term and thus not an appropriate word to be protected by trademark .

On April 4, 2006, TFN filed a lawsuit against Oey, alleging trademark infringement. TFN argued that Oey's claims in various Yahoo! Groups that TFN did not own the "freecycle" trademark constituted trademark disparagement, and his encouraging others to freely use the term "freecycle" constituted contributory trademark infringement. TFN also sought relief under the Arizona common law actions of injurious falsehood, defamation, and intentional interference with business relationships.

The action caught the attention of academics, which came out to support Oey. Two amici curiae submissions were filed in the U.S. District Court of Arizona arguing in Oey's favor, and academic Eugene Volokh assisted Oey's lawyers as an adviser.

On April 24, 2006, the court granted TFN's request for a preliminary injunction, restraining Oey from communicating about the merits of TFNs claim of trademark ownership of the disputed terms.

Oey appealled to the Ninth Circuit, arguing that the injunction was an "unjustified prior restraint on Oey's constitutional right to speak about TFN's efforts to trademark the word 'freecycle'." Oey's appellate brief also attacked the validity of TFN's trademark claims and common law claims.

On September 26, 2007, the Ninth Circuit overturned the injunction and remanded the case to the district court, holding that TFN's trademark infringement arguments failed on a number of bases, including that Oey's use of the marks was unlikely to constitute "use in commerce." The court also held that Oey was expressing an opinion about a putative trademark, and the Lanham Act does not restrain such behavior. It held further that trademark disparagement was not a valid action under the Lanham Act.

There has been no significant activity in the district court after remand.

Details

Content Type: 

  • Text

Publication Medium: 

Forum

Subject Area: 

  • Defamation
  • Trademark
  • Prior Restraints
  • Business Torts
Court Information & Documents
CMLP Information (Private)

CMLP Notes: 

1/5/08: Check district court docket for action after remand.

nothing since 1/9/08 when one attorney withdrew

AVM 6/17/09 UPDATE check - nothing new, last action was 1/9/2008 withdrawl of Attorney Lynn Kirk - but case isnt marked as closed

also, fixed attorney firms etc