Freecycle Network v. Oey [1]

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 [2] 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 [3] 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.