No Cause Of Action Exists For “Genericide” Or Disparagement Of A Trademark

The Ninth Circuit has rejected a plaintiff’s attempt to sue a defendant who publicly pressed his opinion that the term “freecycle” should be in the public domain.

In Freecycle Network, Inc. v. Oey, No. 06-16219, 2007 WL 2781902 (9th Cir. Sept. 26, 2007), plaintiff brought claims purportedly under the Lanham Act to enjoin defendant from proclaiming that plaintiff had no right to assert that “freecycle” is a trademark, which it termed “trademark disparagement.” Plaintiff also sought to stop defendant from trying to use the term as part of the English language so as to make it a generic term incapable of being registered as a trademark, which it called “genericide.”

The Ninth Circuit refused to recognize that the Lanham Act or common law provided such causes of action. The statute permitted claims for disparagement of a product itself, not the trademark for the product. The court also noted that the means for trademark owners to avoid letting a mark become generic is by using publicity campaigns to encourage the public not to use a mark in common parlance, rather than by suing people who allegedly misuse it.

U.S. Supreme Court Rejects Presumption Favoring Patent Infringement Injunction

The Federal Circuit, which is often the court of last resort in patent disputes because the U.S. Supreme Court accepts so few cases for review, has developed a line of authority under which plaintiffs who establish patent validity and infringement enjoyed a presumption in favor of injunctive relief “absent exceptional circumstances.”

However, in eBay Inc. v. MercExchange, L.L.C., No. 05-130 (May 15, 2006), the U.S. Supreme Court held that the four-factor test traditionally applied by courts of equity in deciding whether or not to grant injunctive relief applied equally to disputes arising under the Patent Act.

Regardless of the fact that a case involves alleged patent infringement, a district court should not issue an injunction unless it finds (1) that plaintiff has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.